Trade Mark Protection in Myanmar-Time for the big leap!
Under current Myanmar law, there is no codified system for protection of trademarks. Indeed, there is no dedicated trademark law. However, trademarks are defined under S. 478 of the Myanmar Penal Code of 1860 (Indian Act XLV 1860) as “a mark used for denoting that goods are the manufacture or merchandise of a particular person”. Under Chapter XII of the Private Industrial Enterprise Law, “an entrepreneur...in distributing and selling the goods he has produced shall not sell without a trade mark”.
These provisions have been the only protection granted to trade mark owners in Myanmar, who are then urged to make a Declaration of Ownership with the Office of the Registry of Deeds and Assurances (in either Yangon or Mandalay) under the Registration Act. This registration may be required by Myanmar authorities while investigating cases of harassment. All small industries and SMEs are advised to make such declaration, which is also how large brands such as Google and Apple have registered their marks. The marks are protected (for a period of three years from the date of registration) by way of registration with the Registry of Deed and Assurances. Following registration, a cautionary notice may be placed in local newspapers to notify the public of the ownership of the mark.
This system leaves well-known trade marks vulnerable to infringing marks, since there is no national database.
However, Myanmar has acceded to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), and as such is required to comply with the terms of TRIPS by no later than 1 July 2021.
While Myanmar’s draft Trade Mark law was submitted to Parliament in 2013, it is expected to be implemented by 2017. The law will signal a paradigm shift in the protection of trade marks in Myanmar.
Potential features of the new law include:
“Mark”: The meaning of “mark” will be flexible enough to include “signs capable of distinguishing the goods and services”, and include service marks, collective marks, certification marks, and series of marks. It will also include words, devices, labels, as well as sounds, smells, and touch.
First to file system: replacing the current “first to use” system, the “first to file” system will give rights to the first person to file for the trade mark, as opposed to the first person to use it. This brings Myanmar more in line with other south east nations such as Cambodia, South Korea, and also China.
Process: A process of application, formalities examination, substantive examination, publication, issuance of certificate, and renewal (after ten years).
Priority filing: priority filing will be available, six months from the date of the first filing date.
Transition: There will be a transition period of three years within which those with Declarations of Ownership under the old regime will have to re-register their marks under the new regime.
Enforcement: Proprietors will have the option of both civil and criminal actions against infringers, in specialist intellectual property courts that are in the process of being set up. Customs notices may also be filed to prevent the import/export of infringing goods.
These measures will give brand owners and proprietors a modicum of comfort in the intellectual property framework in Myanmar, and they would do well to register their marks under the new regime promptly, since the new regime follows the “first to file” rule. The entity that is “first to file” is established with registration (even under the current regime), and therefore, prompt registration will help prevent loss of rights.
However, the new law is ambitious, involving the creation of an entire trade mark registration and enforcement ecosystem. This will involve expertise, as well as patience. However, it is a worthy investment for the state of Myanmar, as it will go a long way in increasing ease of business in the country.