Myanmar has yet to produce its own specific legislation on trademarks. As a member of the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), the nation is expected to deliver its IP laws in the near future to provide protection for trademarks, copyright, patents, and other intellectual property.
From August 8-10, 2017, the draft of Myanmar’s Trade Mark Law has recently been published in newspapers for public comment. The bill is now being reviewed by the concerned Draft Law Committee of the Parliament – its approval is expected by the end of this year.
When the Trade Mark Law comes into force, Myanmar’s IP regime may finally become a smooth and formal system of registration for IP rights.
This article serves to provide an overview of the existing system of trademark registration procedures, and the proposed new Trademark Bill.
Current System of Trademark Laws
In the absence of any statutory rights, there are no formal laws of what is deemed registrable other than the definitions of trademarks provided in the Penal Code of Myanmar and the Private Industrial Enterprise Law. In practice, searches are done prior to the applicant’s filing of a Declaration of Ownership (also known as DOO). Trademark searches are conducted by manually reviewing the publication of “Cautionary Notice” advertisements in Myanmar newspapers.
Without proper trademark laws, registration procedures are presently administered under the Office of the Registration of Deeds. Applications must be filed using one DOO for each mark, pursuant to Section 18 of the Registration Act. Moreover, for foreign applicants, another document that is required for mark registration is a notarised and legalised Power of Attorney (PoA) in favour of a local trade mark agent with an address for service in Myanmar.
Having completed the legal procedures for trademark registration, the registered mark shall then be published in Myanmar newspaper as a “Cautionary Notice” to keep third parties on notice of the mark holder’s ownership.
Subsequently, a trademark renewal may be declared with the submission of a Declaration of Renewal of Trademark and a further Power of Attorney to the local agent. Nevertheless, if an applicant does not renew, there will be no invalidation of their trademark since, upon registration, it is valid indefinitely. However, it is advisable to renew every 3-5 years and also to republish the “Cautionary Notice” every 3 years.
New Trademark Bill
In an effort to sustain and facilitate further economic growth, the Myanmar government has been working for some years to establish a ‘business-friendly’ legal framework. A key component of this is the new Trademark Law, anticipated to be phased in by the end of 2017, which will bring Myanmar’s IP laws into line with the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement. The salient points of the proposed new Trademark Bill are set out below.
First -to-file ownership
In the existing system, given the lack of case law precedent, mere registration of a trademark in Myanmar is not sufficient to signify mark ownership – the system provides that the right of ownership is determined by the commencement of actual use of the mark (first-to-use ownership). The new registration system will recognise trademark owners on a first-to-file basis. This means that – irrespective of prior use – it is possible for someone else to validly register a mark and prevent anybody else from future use. Foreign businesses will be able to apply to register trademarks under the new rules – however, their application must still be made through local agents.
Currently, in the absence of a governmental IP office in Myanmar, trademark applications are forwarded to the Registrar of Deeds and Assurances. Under the new law, the Myanmar Intellectual Property Office (MIPO) will be established under the Ministry of Education (Science & Technology).
Under the Draft Law, a more liberal definition of registrable marks – to include trademarks, service marks, collective marks and certification marks – will be adopted. It will also protect geographical indications and well-known marks. Opposition and cancellation actions will become available, and trademark infringement will become a criminal offence under the new law.
Registration of marks under the new Law will be effective for ten years, with the option to renew indefinitely at the end of every ten-year term. Non-use of a mark for three consecutive years will be sufficient grounds for cancellation.
Persons holding marks under a “Declaration of Ownership” under the current system will need to re-file such declarations under the new framework within three years of the law’s commencement. The Draft Law also states that all existing marks would have to be re-examined for registration once the new law has come into force.
There have been preliminary discussions on introducing stronger IP enforcement provisions, such as Special IP courts to administer civil and criminal penalties (including prison sentences of up to 3 years) for trademark infringements, or possible access to court injunctions and customs detention or suspension orders, to prevent the import or export of infringing merchandise. However, nothing has come to light in the Draft Law which concerns conflicts between marks recorded under the current system.
Myanmar’s steps towards establishing a concrete system for the protection and enforcement of rights like trademarks are significant, considering there is currently no IP legislation. An important thrust in the country’s economic development is the growing number of foreign investors; these investors need established IP laws to protect their interests. When passed, this new law will be a step in the right direction for innovation in ASEAN business.
By Denise Mirandah and Sharifah Alsri