In July and August of this year, four IP bills were submitted for deliberation by the Myanmar Parliament and speculation is high that these bills will be passed very soon, possibly even before the end of the year. Among these bills, that on trademarks is most anticipated because once passed, it would update Myanmar's trademark registration procedure to a first-to-file system, moving away from the current system where trademark rights are acquired from prior use.
Several drafts of the trademark bill have been submitted for deliberation by the Myanmar Parliament in the past, and similarities between each of these prior versions have provided insights into what the final draft will look like. We know, for example, that there will be a trademark registry created under the law empowered to administer the trademark applications and registrations. We also know that the law will establish a first-to-file system of trademark registrations, which necessarily implies that a trademark prosecution procedure will be set up.
Apart from these points, however, our review of the latest draft of the trademark bill brings to light some additional details worth noting, and we share below some of the most important items to expect.
1. Registered trademarks will not be carried over to the new system
This is one of the most anticipated issues related to the passage of the new trademark law, and based on the latest draft of the bill, it seems there will be no statutory process to allow the carry-over of currently registered marks into the new trademark registration system. The law expressly requires that marks be registered under the new system to benefit from the protections provided by the new law.
This is not to say, however, that current registrations will be rendered irrelevant. A closer reading of the bill provides that if a mark has been registered under the current registration system, the applicant can provide details and supporting documents proving such prior registration. This suggests that even if all marks will have to be registered again, some rights gained from the prior registration may be recognized and preserved.
In practice, this also means that registering trademarks under the current system is a more prudent approach than waiting for the new law to be passed. Given the expected transition to a first-to-file system, evidence of prior registration(s) under the previous regime may be especially useful to demonstrate continuous good faith ownership should an opposition be necessary in the event another party files an application for the mark first when the transition takes effect.
2. Well-known marks will be recognized
The bill expressly defines well-known marks and offers varying protection for both registered and unregistered well-known marks. However, the law is silent on the process of how a mark would be declared a well-known mark, providing only that a mark would be well-known if it meets the set criteria. Exactly what these criteria will be is not provided for in the law, and will likely be covered by subsequent issuances, possibly in the rules and regulations for trademark registration. It is also not clear if there will be a separate registry for well-known marks.
While having statutory protections over well-known marks will be a welcome feature, seeing these provisions in action may realistically still be a few years out, after regulations are issued and processes further defined. Until then, it is best to have at least basic protections in place, such as a trademark registration under the current registration system. At the very least, a trademark registration already in place would be compelling proof of historical use of the mark in Myanmar, which is often a useful argument when seeking to claim that a mark is well-known.
3. More detailed registrability guidelines
More detailed guidelines to govern the registrability of marks will be in place, covering both absolute and relative grounds for unregistrability. Absolute grounds would apply to marks that are non-distinctive, descriptive, generic, misleading, confusing, adverse to the public interest, contrary to law, or contrary to any international conventions. Relative grounds would cover marks that are identical or confusingly similar to a registered mark or a well-known mark.
4. Application procedure will be provided
A basic application procedure will be provided in the new law, although more detailed steps and requirements are expected to be included in forthcoming rules and regulations issued after the law is passed. Based on the bill, we can expect both formal and substantive examination to be carried out by an examiner who may allow or refuse the registration of the mark, or allow the application to be revised. Applications can be drafted in either English or in Myanmar.
5. Priority rights will be included
Priority rights can be claimed based on the Paris Convention for the Protection of Industrial Property (the "Paris Convention"), provided that an application is filed within six (6) months from the date of the overseas application. In practice, however, we anticipate that further rules and regulations will be issued to cover applications with priority claims, which should specifically include the supporting documents required to support such priority claims.
We also note that the right to a priority claim is made explicitly available to any party who is from a Member State of the Paris Convention, although interestingly, Myanmar itself is not a Member State. It is unclear if membership to the Paris Convention will be addressed before the priority rights under the law are deemed to apply.
6. Oppositions and cancellation actions will be available
In contrast to the current registration system, opposition actions will be available under the new law, and there will be a 60-day period from the publication of the application to institute proceedings. The law does not go into much detail regarding the rules of procedure for making oppositions, but again we expect separate rules and regulations to be issued in this regard. Cancellation actions will also available. An aggrieved party will be able to institute an action based on non-use of the mark without a valid reason three (3) consecutive years, or where the mark has become generic.
7. 10-year trademark term subject to renewal
Registered marks will have a 10-year term, renewable for additional 10-year terms subject to the approval of the registration office. There will also be a grace period of six (6) months after expiry of the initial 10-year term within which a mark can be renewed.
8. Geographical Indication registration will be available
We expect the law to include detailed procedures relating to the registration and protection of Geographical Indications, including guidelines on when such indications shall be registrable. Geographical Indications are given somewhat similar rights as registered marks, and shall also be valid for a 10-year term.
9. Stronger border control measures
Customs and border control measures will be strengthened so we can expect a more robust framework for requesting border control actions such as seizures, and challenging the same. The bill, for example, allows the issuance of Suspension Orders, which are akin to injunctions that would prohibit the entry of counterfeit goods into Myanmar. Suspension Orders can be issued by Customs authorities and can be challenged in court.
The law is silent, however, about the recordal of trademarks. We anticipate that the current procedure for trademark recordal being used by Customs authorities (read more about it here) may apply even after the law is passed. Given the expectation that the trademark recordal procedure will carry over, we see no reason to wait for the new law to pass before implementing a border control strategy.
10. Special IP courts will be established
Special courts will be established and given the exclusive jurisdiction to handle IP cases, or, alternatively, courts already established will be granted special powers to deal with IP cases specifically. As of yet, however, the practices and procedures for such courts have not been provided.
The Myanmar parliament is currently in recess, so no developments are expected regarding the trademark bill, as well as the other three IP bills, until the sessions resume on October 17. It is not yet clear exactly when the IP bills will be submitted to a vote, but we are continuing to closely monitor the progress and we will issue further updates as developments occur. We will, of course, also be providing our analysis on the design, patent, and copyright bills shortly.