Myanmar government’s efforts paid off by passing first legislation which will be passed into law.…
Myanmar’s New Trademark Law
Early 2019 witnessed an introduction of a number of Intellectual Property Laws in Myanmar. A new Trademark Law and a new Industrial Design Law were enacted on January 30, 2019. This was followed by the enactments of a new Patent Law on March 11 and Copyright Law on May 24. Among all these new enactments, the Trademark Law is said to have the maximum impact on the investors and entrepreneurs. This is a big step taken by Myanmar to attract foreign investors given the fact that how important intellectual property protection is viewed by the modern world. Myanmar already bears the brunt for being the only ASEAN country that is not a member of the Madrid Protocol. The new Law establishes a new framework for trademark registration and protection in line with other ASEAN countries and international standards.
The new Trademark Law revamps the current trademark registration and protection policy in the country. Below given are the highlights of the Law with respect to the major principles and administrative bodies it establishes:
- For the administration of trademark registration, the new Law establishes the Myanmar Intellectual Property Office (MIPO) under the Ministry of Commerce. The MIPO will have the authority to examine, publish in the journal and handle opposition proceedings of trademarks.
- For implementation and administration of IP related policies, the Central Intellectual Property Committee (CIPC) and the Intellectual Property Agency (IPA) is to be set up under the Law.
- The trademarks registered under the old system are to be re-filled. A “first-to-file” system will be adopted under the new law for trademark registration and protection, unlike the “first-to-use” system followed earlier.
- The new Law recognizes the concepts of “service marks”, “collective marks”, “certification marks”, “trading names” etc. It also protects “famous marks” (also known as well known marks) and “geographical indications”.
- The new Law also contains provisions for cancellation of registration for ‘non-use’. It also provides for invalidation of a trademark on the ground of non-registrability.
- The term for registration under the new Law is ten years from the date of filing the application.
The introduction of these new provisions and administrative bodies need a lot of effort in order to bring about all the changes from the old system to the new system. Furthermore, no procedure has been provided for the re-registration of the marks under the old system. This means that these marks have to be re-filed to the MIPO which will then take on the examination and the subsequent processes. To facilitate this process of implementation of the new Law, two phases have been prescribed, namely; “soft opening period” and “grand opening period”.
The Soft Opening Period
The time period prescribed to soft opening is between 20th December 2019 and 19th May 2020. During this phase, the previous trademark owners are required to re-apply for registration in order to continue getting statutory protection. The re-filing is to be done along with the proof of registration under the old framework supported by a Power of Attorney. Experts also advise submitting any document as evidence proving the past use of the trademarks such as invoices, advertisements, catalogs, etc.
The Grand Opening Period
The grand opening period commences after 19th May 2020. After the commencement, new trademark applications can be filled and all prospective future right holders may file for registration. The previous owners who fail to qualify and register in the “soft opening” phase will be able to apply after the commencement of the “grand opening”.
The administrative procedures and bodies under the new Law are yet to be established properly and will take some time to be in place to function properly. However, in the meantime, while the ‘soft opening phase’ is underway, the previous owners shall collate necessary documents and evidences in order to get a smooth transition of the registration from the old framework to the new framework. The owners shall give utmost importance to collecting and compiling these documents. This will be an advantage to both the owners and the administrative bodies as it will lessen the burden on the bodies when the ‘grand opening’ commences.
Although it is argued that the sudden revamp of the old framework in addition to the lack of any procedure for the trademark owners under the old system to continue getting statutory protection results in a lot of inconveniences, it cannot be denied that the new Law is futuristic, in line with international standards and provides for an effective and dynamic framework for trademark registration and protection. Furthermore, strong protection of intellectual properties like trademark will strengthen the economy by attracting investors and entrepreneurs from the country as well as from abroad which is much needed for a developing economy like Myanmar.
Author: Aparthiba Debray, student of 4th Year- B.A. LL.B. (Hons.), Institute of Law, Nirma University, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at [email protected].
References:
[1] Trademark Law, (2019, Pyidaungsu Hluttaw Law No. 3[2]An Anlaysis of the New Trademark Law 2019, https://www.lincolnmyanmar.com/wp-content/uploads/2019/04/Trademark-Law-2019-analysis-1.pdf.