By: Melinda Upton, Rohan Singh, and Anjali Narendra

Myanmar’s Draft Trade Mark Law is expected to be passed in 2017. This signals substantial changes to the current process which is based on common law and common practice rather than statute. The Draft Law intends to import structure and certainty into Myanmar’s trade mark regime to generate greater protection and preservation of intellectual property and to meet international obligations derived from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement).

The new laws set the parameters for what constitutes a trade mark and confirms that trade mark protection will also be available for service marks, collective marks, certification marks and series of marks.

Under the new laws, a draft of which was made public in July, Myanmar’s first-to-use system will be replaced by a first-to-file system aligning Myanmar with other ASEAN nations. Registration will confer protection for 10 years from the filing date, and is renewable every 10 years. This should provide a clear basis for trade mark owners to secure trade mark protection as opposed to the current regime which requires evidentiary proof of first use in Myanmar in order to establish a prima face case. This is currently done by filing a declaration of ownership with the Registry of Deeds and Assurances. It is also common practice to publicise your trade mark in a local newspaper.

In relation to enforcement of rights, trade mark owners will have the ability to file litigation in both civil and criminal actions against infringers in specialist Intellectual Property courts, which are in the process of being established.

However, it is important to note that a local agent is still required to file trade marks on behalf of individuals or corporations whose ordinary residence or principal place of business lies outside Myanmar.

In order to register a trade mark under the new laws it must be distinctive and must not be registered in bad faith. Upon receiving the requisite forms and information the Registrar will perform an inspection and publicise the trade mark inviting opposition within a defined period of time (30 days if the opponent resides in Myanmar and 60 days if the opponent resides outside Myanmar).

A trade mark can be cancelled if determined as unregistrable under the new laws. The grounds for cancellation also encompass non-use for three consecutive years, and therefore trade mark owners should ensure they are actively using their trade marks in Myanmar.

To facilitate the move from first-to-use to first-to-file a transitional period of three years has been proposed to commence on the date the new law enters into force.

If you currently have a trade mark recorded on the Registry of Deeds and Assurance you must re-file your trade mark with the Myanmar Intellectual Property Office (MIPO) when the new law comes into effect. This would preserve priority under the new system.

If a mark has not been re-filed with the MIPO, the record on the Registry of Deeds and Assurances will automatically expire when the transitional period concludes.

If you do not have a trade mark recorded on the Registry of Deeds and Assurance but wish to secure the earliest possible filing date then it is suggested you record your mark in accordance with current practice as soon as possible. After the laws have been enacted, it would be prudent that you re-file your trade mark and secure your earlier priority date.

This approach is encouraged to address the uncertainty of whether prior use of a mark will be considered under the first-to-file new system.

As indicated above, the changes are still in draft form and could be varied in subsequent versions …. so stay tuned.