We issue this bulletin to update on developments to the trademark practice in Myanmar
We will continue to monitor developments in intellectual property protection in Myanmar, and issue updates as developments take place. Meantime, our team would be happy to assist should you have any concerns or questions.
Myanmar's new Electronic Trademark Registration System to launch on 1 October
The Myanmar Ministry of Commerce announced that online trademark applications under the new electronic trademark registration system will start on 1 October 2020. This new announcement was made last Friday (28 August 2020) by way of Order No. 63/2020. The launch of the new electronic trademark registration system was previously scheduled on January of this year, but has since been delayed.
As anticipated, during this transition period the new electronic trademark registration system will accommodate:
a) Marks previously registered under a Declaration of Ownership of Trademark; or
b) Marks actually used in Myanmar.
Scanned copies of the Declaration of Ownership will be sufficient for this re-registration process, although originals may be subsequently requested by the trademark examiner for further review. Proof of the use of the mark in Myanmar can by shown by submitting a copy of the publication of a Cautionary Notice, or advertisements or promotional materials, tax documents, or by other means which tend to prove actual use of the mark in Myanmar.
In the absence of any official instructions, we expect the Office of Registrations of Deeds and Assurances to continue to accept applications for registrations of Declarations of Ownership. However, this may policy may change as we move towards the 1 October start date of the new electronic system. Trademark owners whose marks have yet to filed and registered in Myanmar should take of note of this timeline and consider an appropriate transition strategy.
The official fees for trademark application under the electronic registration system have yet to be announced. A separate notification is expected to be issued regarding official fees.
Although the launch of the new electronic registration system is intended to commence on 1 October, it should be clarified the date when the new Trademark Law will officially take affect has yet to be announced. We understand this will follow after the new electronic system has already been in place. Also, while applications are planned to be accepted under the new electronic registration system beginning on 1 October, Order 63/2020 did not include a specific time limit on how long the transition period will last.
For clients having standing instructions for re-registration, we will process these applications in due course and update you once we have confirmed that the new system is operational and that applications have been filed.
Should you have any further questions about this re-registration process, please do not hesitate to get in touch with any member of our team.
Soft launch of New Trademark System
The soft launch of Myanmar's new electronic trademark system is still on hold. The launch (originally scheduled for January this year) has been delayed and there has been no official announcement when it will commence. Despite the delay, we understand that preparations by the relevant government offices are ongoing, including the training of official staff of the Myanmar IP Department. We will continue to update you on updates about the soft launch as they develop.
New Trademark Rules
A draft of the Trademark Rules is under review and consideration by the relevant government ministries. A working draft of the Trademark Rules was issued for public comment and discussion in December 2019, and we understand this is now under discussion amongst the ministerial stakeholders. The Trademark Rules will largely cover the forms and procedures for trademark applications in Myanmar, and we expect separate rules and regulations to be issued to cover official fees, trademark prosecution and inter partes trademark proceedings.
Trademark Applications and Renewals
Trademark application remains available in Myanmar under the current and prevailing practice of filing Declarations of Ownership of Trademark and publications of Cautionary Notices. We recommend clients to continue to file their new marks or presently unregistered marks in Myanmar, under this pre-existing registration framework to take advantage of the protections currently available under Myanmar laws and practice.
Similarly, we recommend clients to proceed with renewal of all marks whose renewal period has fallen due. Note that in Myanmar it is customary, although not statutorily required, to renew marks every 3 years since registration. We recommend clients to keep to this established practice to conform with generally accepted trademark practices in Myanmar in order to avail themselves to protection. This is especially relevant to marks whose renewal due dates fall in 2020 but have yet to be renewed, having anticipated that the soft launch would have been launched by now and the marks already registered under the new system.
Highlight on Infringement
Reports suggest that incidents of infringement remain high in Myanmar, and unfortunately remedies for infringement under the new Trademark and Copyright laws are not yet available as they have yet to take effect. That said, rights owners are not without recourse. Our team finds that engaging offenders directly is usually effective in addressing infringement quickly and cost effectively. This may be a viable option in the short term, as opposed to tolerating clear cases of infringement for the time being.
Copyright, Patent and Industrial Design
Copyright protection in Myanmar continues to be governed under the 1914 Copyright Act which, being a rather dated law, has its limitations on protecting foreign work and modern creative works (like software or digital media, as examples). We continue to advise clients to consider these limitations in dealing with copyright protected work in Myanmar.
Industrial design and patent applications remain unavailable at this time. We understand that the launch of the design and patent registration systems may happen only after the electronic trademark registration system has been launched.
Soft Launch Pending
The “soft launch” of the new trademark registration system in Myanmar remains pending, and the launch date remains uncertain. The “soft launch” of the new trademark system was scheduled to commence in January earlier this year. Now, we have been informed the matter is still under consideration by the Myanmar government.
We are hopeful that there may be developments regarding this by the upcoming elections in November. We will continue to monitor developments surrounding this and issue updates as they come.
Trademark Registration and COVID-19 Measures
Trademark registration by way of Declarations of Ownership remains available despite the COVID-19 measures being implemented in Myanmar, although certain restrictions are in place. Particularly, the Office of Registration of Deeds is unable to accommodate applicants coming from certain townships that are currently under “stay-at-home” orders. Further, we also anticipate some delays with international courier services due to the limited availability of flights to and from Myanmar.
Trademark Renewals for 2020
The postponement of the “soft launch” of the new trademark system has raised the issue of marks that are due for renewal in 2020. As background, it has become customary in Myanmar to renew marks every three (3) years. This renewal process typically involves the registration of fresh Declarations of Ownership and the option to re-publish a Cautionary Notice. It should be noted that these are not statutory renewal requirements, but rather customary measures intended to demonstrate a deliberate assertion of ownership over a mark.
The supposed “soft launch” of the new trademark registration system last January was supposed to replace the practice of renewing trademarks by way of a fresh Declaration of Ownership as trademark registration would have already transitioned into the new system by the start of the year. Now that the “soft launch” has been delayed, the question now arises on what should be done for marks whose 3-year renewal cycle falls in 2020.
Having assessed the current situation both concerning the delay of the “soft launch” and the further impact of COVID-19, our recommendation is for clients to proceed with the renewal and maintenance of marks in 2020 as scheduled. This is to ensure the maintenance of marks as per the prevailing trademark practice in Myanmar, and this provides the best scope of trademark protection currently available.
We remind that trademark registrations in Myanmar are not subject to a statutory renewal period, and do not technically lapse after 3 years (although it has been customary to renew every 3 years).
- The soft launch of the new electronic trademark registration system has yet to commence. It was previously announced to be ready by January 2020. Although the soft launch of the system remains imminent, we are unable to confirm on the timeline of the launch at this stage without any official announcement from the authorities.
- The draft Trademark Rules, which will cover trademark prosecution under the new Trademark Law, is still under review and discussion. We understand that the Trademark Rules may likely be officially approved and issued well after commencement of the soft launch of the trademark registration system. The timeline for the approval of the Trademark Rules likewise remains uncertain.
- Trademark registration by way of Declarations of Ownership under the current system remains open and available until further notice. We recommend clients to assess their portfolio in Myanmar and consider whether there are any new or unregistered marks that can be registered during this time in order to take advantage of the envisaged early transition provisions during the soft launch.
- For clients having standing instructions for trademark application under the new system, we remain ready for filing at the commencement of the soft launch. We will be issuing updates shortly on how to access the virtual data rooms to monitor the transition of large volume portfolios. We will be issuing the corresponding filing reports in due course.