First Impression of Myanmar's Incoming Industrial Design Law
Speculation is strong that the approval of Myanmar's Industrial Design Law is imminent. An updated version of the Industrial Design bill, along with the revised bills for trademarks, patents, and copyrights, were submitted to the Myanmar Parliament for consideration last August and September, and the next step is for the bills to be taken up by the legislature for a vote. Optimistic predictions suggest that the bills may be passed before the year ends, but this is highly speculative as developments in the legislature are particularly difficult to forecast.
At present there is no law that specifically covers the registration of industrial designs in Myanmar, but registration was nonetheless acceptable under the same procedure as that for trademarks. As of August 2017, however, the Office of the Registration of Deeds and Assurances (the de facto IP registrar in Myanmar) no longer accepts applications for design registrations. The change of policy, we were told, anticipates short term passage of the new Industrial Design Law.
Below are some notable features which we expect to see when the law is finally passed:
Framework and Registrability
The registration framework will be a typical first-to-file system and registrability will be assessed on the basis of novelty and distinctiveness. A design is deemed novel if it has not been displayed, used, published, or exhibited prior to the filing of the application. Designs that merely consolidate commonly-known features, or those with elements blatantly similar to other common designs, will fail the novelty the requirement and will ultimately be refused registration. Other designs that will be refused registration are those that feature a technical or functional application, or those having an adverse effect on public peace, morality, faith, religion or culture. We anticipate that further rules and regulations will be issued in respect of the registration of Industrial Designs and these will likely be issued after the passage of the law.
Note, though, that there is no provision allowing the automatic carry-over of existing Industrial Design registrations. This "re-registration" scheme is similar to what we saw with the bill on trademarks (read more about it here), and this essentially means that all Industrial Designs, including those registered under the current system, must be re-registered in order to take advantage of the protections under the new law.
Ownership of Design Between Employers and Employees
The draft bill includes specific rules on resolving ownership where the work was created within an employer-employee relationship. Generally, the employer will have the right to register the design if it was created according to the employer's instructions and within the scope of the employee's responsibilities. Otherwise, the employee will have the right to register the design, even if the employer's resources were used to create it. Note, however, that the Employer's right to register corresponds with the employment relationship — if the employer fails to apply for registration within a year from termination of employment, the right to register the design will revert to the employee.
Member States of the Paris Convention or the World Trade Organization will be allowed to claim Priority Rights on applications. For the right to apply, the Myanmar application must be filed within six (6) months from the home application.
Opposition and Cancellation
The framework will allow design applications to be opposed, and existing registrations cancelled. Applications can be opposed within sixty (60) days from publication, although applicants will have the additional option to have the publication postponed for a maximum period of eighteen (18) months. Existing registrations may also be cancelled on the basis of non-renewal, abandonment, or invalidation of the registration. Further, invalidation can occur for deficiencies in fulfilling requirements of form or novelty, fraud, or upon order of a court.
The rules of procedure to cover opposition and cancellation actions have not been written into the current draft law, so we anticipate further regulations will be issued to cover this point in more detail.
Term and Renewal
The initial term of registration will be five (5) years, and each term can be renewed twice — this adds up to a maximum term of fifteen (15) years in total for each Industrial Design registration.
Applications for renewals can be made within six (6) months prior to expiry of the current term, or within a 6-month grace period after the term lapses.
IP-specific Intellectual Property Courts will be established, charged with protecting IP rights. Among the powers granted to this end will be the authority to issue temporary injunctions upon the request of an aggrieved party, to prevent the entry of infringing goods into the local market, or to preserve evidence of infringement where necessary. These courts may also issue ex parte injunctions where further delay may cause irreparable injury to a rights holder, or where there is reason to believe that evidence will be destroyed.
Other additional powers include requiring the payment of indemnity, cause the destruction of infringing goods, and prevent the importation of equipment used to manufacture them without need to compensate the offender.
Note that these remedies are essentially civil actions. Criminal sanctions under the law are reserved only for malicious issuance of registrations, entry of false information in the registration system, disclosure of confidential information, or issuance of documents without authority.
Once passed, the Industrial Design Law will undoubtedly strengthen IP protection in Myanmar. This is significant for clients looking to set up shop in the country, particularly those interested in establishing manufacturing capabilities, to whom legal protection for Industrial Designs can be a critical consideration.
We will continue to monitor the progress of the Industrial Design bill as it moves through the Myanmar Parliament and provide updates on any meaningful developments. In the meantime, we will also be issuing further updates on the anticipated Patent and Copyright Laws.