Myanmar’s long anticipated Trademark and Industrial Design Bills were signed into law by the Myanmar President yesterday, 30 January 2019. The laws are set to introduce significant and fundamental changes to the framework of IP laws in the country
Importantly, despite being passed, both laws expressly provide that neither will be officially in force until the issuance of a further notification by the President. There is currently no clear indication on when the notification confirming enforcement will be issued.
The Trademark and Industrial Design laws are two of four new IP laws that are expected to be enacted by the Myanmar government. The copyright and patent bills are still awaiting further approvals within the Myanmar Parliament.
We highlight the below the following key features of the new laws
Administration and Enforcement
- New IP office: A dedicated government office will be established to handle Intellectual Property matters, including registration – a first in the country’s history
- IP-dedicated courts: The law will establish IP-dedicated courts that will have specific expertise in dealing with intellectual property matters.
- Enhanced enforcement measures: The laws will introduce enhanced enforcement remedies relating to IP infringement and protection.
- Existing trademarks have to be re-registered: The law makes clear that all existing trademarks have to be re-registered, and there is no automatic carry-over of registrations. Declarations of Ownership for existing registrations and any evidence of use can be submitted and will be considered during assessment of reregistration applications.
- First-to-file system: A first-to-file registration system will replace the current first-to-use framework of trademark ownership. An official registry of marks will be maintained.
- Prosecution: Under the new law, trademark applications will now be subject to a formal and substantive examination process.
- Well-known marks and geographical indications: Well-known marks will be recognised and geographical indications can be registered and protected.
- Priority rights: The law expressly provides that Priority Rights will be accepted, but it must be noted that Myanmar has yet to accede to the main international IP treaties enabling priority rights.
- 10-year term: The trademark registration term will be 10 years, and renewal will be available within 6 months from expiry
- Opposition and cancellation: Opposition actions will be available, and can be filed within 60 days from publication. Marks not used for 3 consecutive years may be vulnerable to cancellation.
- Recordal of trademark licenses: Agreements covering the licensing of trademarks may require recordal with the IP office.
- First-to-file system: The Law introduces the country’s first industrial design registration system. It will be a first-to-file application system, and registrations will be granted based on novelty and distinctiveness. Designs that feature a technical or functional application, or those having an adverse effect on public peace, morality, faith, religion or culture may be denied registration.
- Term: Design registrations will have a 5-year term, renewable up to 15 years.
- Prosecution: Invalidation and cancellation actions will now be available under the new registration framework.
- Ownership of designs made by employees: As a general rule, 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.
- Recordal of licenses: Licensing of exclusive rights to the use of designs may require recordal with the IP office
The rules and regulations for implementing both the Trademark and Industrial Design laws have not yet been released. We will continue to update you on all developments with the IP laws as they happen. Please get in touch if you have specific questions regarding the new laws.