Myanmar is the largest country in mainland South East Asia with a population of over 53 million. While it is a signatory to the TRIPs Agreement, Myanmar presently does not have a dedicated trademark law. Registration is possible only through a “Declaration of ownership of trademark” under the Registration Act of 1909, following which a cautionary notice is published in local newspapers describing the mark.
Myanmar is rapidly establishing itself as an emerging economy. Today, foreign investment is the primary driving force of this economy. Towards this end, in the year 2013, a draft trademark law was submitted to the Myanmar Parliament. This trademark law is expected to be phased in by the end of 2017 and shall make the IP laws of the country modern and TRIPs compliant.
The key highlights of the new law have been outlined below:
Intellectual Property office
Currently, trademark applications in Myanmar are handled by the Registrar of Deeds and Assurances; however, under the new law, the Myanmar Intellectual Property Office (MIPO) will be established.
Scope of Protection
The new definition is the most advanced and flexible definition; it shall include trademarks, service marks, smell marks, touch marks, collective marks, and certification marks. Geographical indications, trade names and well-known marks shall also be recognized under the new law. Further, non-traditional marks such as smell, sound and shape marks shall also be protected.
The current system in Myanmar functions on a first-to-use basis, due to the lack of legislation. However, the new law will be based upon a first-to-file system, where it would be possible to validly file for a new trademark irrespective of use, and prevent other parties from future use of the mark.
Validity of Registration
The registration of a mark shall be valid for a period of ten years, after which the owner shall have an option to renew the mark indefinitely every ten years. Further, a mark may be cancelled on grounds of non-use for three consecutive years.
Registration by foreign brand owners
The new law shall allow both domestic and foreign brand owners to file a trademark application. Local agents must be appointed by foreign owners to act on their behalf. The application may be filed in English or Burmese and must be accompanied with a “Declaration of Intention to use”. The other procedures of filing, examination, publication, opposition and registration shall take place in a routine manner.
Enforcement of rights
As per the draft bill, trademark owners shall have the right to pursue both civil and criminal action against alleged infringers, and criminal offences shall be punishable with a maximum prison sentence of three years. Owners shall also be able to file customs notices to stop the import/export of infringing goods. This shall further give teeth to the new laws and go a long way in protecting the owner’s rights.
These laws will help transition the applications from the current system to the new one. Persons currently holding marks under the “Declaration of Ownership” system shall have to re-file these declarations under the new system within three years of the new law’s commencement. Further, as per the draft bill, all existing marks shall have to be re-examined for registration once the new law is in force.
Myanmar’s new Trade Mark law will surely put in place an efficient and structured system for IP owners to duly protect their rights. However, as the new law supports the ‘first to file’ principle of protecting trade marks, brand owners using/ intending to use their marks in Myanmar are advised to file their Trade Mark applications as soon as the new law is implemented to avoid the risk of losing their rights to squatters.