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 Trademark Update (12 April 2021)

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Trademark filing system temporarily offline from 13 to 19 April 2021

This alert provides an update on the status of trademark filings in Myanmar.

In celebration of the Myanmar New Year Holidays, the online trademark filing system will be temporarily offline, from 13 to 19 of April. Service will resume on 20 April 2021, and we will recommence the processing of trademark applications then. Trademark searches will also be unavailable during this time.

Please contact us if you have questions or concerns.


Myanmar Trademark Update (1 April 2021)

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"Soft launch" trademark filing will remain available after 31 March 2021

This alert provides an update on the status of trademark filings in Myanmar.

We received information from the Myanmar IP Department that the "soft launch" of the electronic trademark registration system will remain online and available even after 31 March 2021.

We understand that no official announcement will be issued regarding this position, and that the "soft launch" status of the system will continue indefinitely until the "grand launch" of the new Trademark Law. No date has been set yet for the grand launch.

We can continue to process trademark applications. Note, however, that the electronic trademark registration system may be temporarily unavailable due to intermittent internet issues and when the system is undergoing maintenance.

Please contact us if you have questions or concerns.


Myanmar IP Bulletin (12 March 2021)

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This is our weekly update on the situation in Myanmar in relation to trademark services:

  • The online trademark registration system remains operational, and we are able to process trademark applications as normal.
  • Due to interruptions caused by protests and government actions in Yangon, trademark searches are currently unavailable. We will issue further updates on when this service can resume.
  • The registration of Declarations of Ownership with the Office of Registration of Deeds and Assurances in Yangon remains unavailable at the moment. We continue to advise clients to consider the publication of cautionary notices to claim ownership of new trademarks in Myanmar.
  • The Myanmar IP Department (MIPD) is still unable to provide definitive information or timeline regarding the transition into the new trademark system. We will issue further updates regarding this once more information is available.

Please contact us if you have questions or concerns.


Myanmar IP Bulletin (5 March 2021)

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This is our weekly update on the situation in Myanmar in relation to trademark services:

  • The online trademark registration system remains operational, and we are able to process trademark applications as normal.
  • We received unofficial information that the Office of Registration of Deeds and Assurances in Yangon will not be accepting or processing applications for registration of Declarations of Ownership at this time. It is unclear when their services will resume. In view of this, we recommend that clients consider the publication of cautionary notices to claim ownership of new trademarks in Myanmar.
  • The Myanmar Times, which we usually use for the publication of cautionary notices, has suspended newspaper publications for three months, starting 21 February. For this reason, we will be using the Global New Light of Myanmar for the publication of cautionary notices moving forward.
  • The Myanmar IP Department (MIPD) is still unable to provide definitive information or timeline regarding the transition into the new trademark system. We will issue further updates regarding this once more information is available.

Please contact us if you have questions or concerns.

Myanmar IP Bulletin (25 February 2021)

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This is our weekly update on the situation in Myanmar in relation to trademark services:

  • The online trademark registration system was temporarily offline for maintenance (as announced) between 18 February (Thursday) and 21 February (Sunday) 2021. Service resumed on 22 February 2021. The system is now operational and we are able to process trademark applications.

  • Internet service in Myanmar remains intermittent at the moment, with interruptions in the evening, frequently lasting until the following morning at around the start of the business day. Note that internet availability and the quality of the connection directly impact the capability of our team to process trademark applications.

  • We continue to be able to process trademark search requests. However, please be advised that completing trademark search reports may take longer than usual because work schedules have been impacted by protests happening in Yangon City.

  • We await further news and confirmation from the Myanmar IP Department regarding the following:

    • the announcement on the official fees for trademark services
    • the anticipated launch of the payment system for the new trademark system
    • the issuance of the Trademark Rules
    • and the confirmation of the end of the transition period into the new trademark system, which is tentatively set at 31 March 2021 (please see our alert last January for further reference)

  • We will issue further updates should there be developments regarding these points.

Please contact us if you have questions or concerns.


Myanmar IP Bulletin (18 February 2021)

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We update you on the current situation in Myanmar in relation to trademark services:

  • The online trademark registration system remains operational. However, it was announced earlier today that the online system will be temporarily unavailable for regular maintenance. Service will resume on 22 February 2021.

  • Access to the online trademark registration system remains subject to the availability of internet access in Myanmar. Internet access has remained mostly stable for the past week. Recent interruptions have been reported, but these have occurred outside of business hours (from late evening to the following morning, prior to the open of business).

  • A new minister was appointed to the Ministry of Commerce, which has supervisory authority over the Myanmar Intellectual Property Department (MIPD). This change has not affected the operations of the MIPD, and they continue to hold office as usual.

  • We await further news and confirmation from the MIPD about the announcement on the official fees for trademark services, the launch of the payment system for the new trademark system, the issuance of the Trademark Rules, and the confirmation of the end of the transition period into the new trademark system, which is tentatively set at 31 March 2021 (please see our alert last January for further reference). We will issue further updates should there be developments regarding these points.

Please contact us if you have questions or concerns.


Myanmar Trademark Update

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Online trademark filing system remains operational

  • In the early morning of 1 February 2021, the Tatmadaw, Myanmar's military forces, detained State Counsellor Daw Aung San Suu Kyi, President U Win Myint, leaders of the ruling party National League for Democracy, some members of Parliament, and several other prominent civilians.

  • Order No. 1/2021 was issued under the authority of the President's Office by Vice President U Myint Swe (in his newly stated capacity as President Pro Tem).

  • Under Order No. 1/2021, a state of emergency was declared and the legislative, executive and judicial powers were transferred to the Commander-in-Chief of the Defence Services (CIC) for a period of one year from 1 February 2021.

Read more on the detailed account of the events and their impact.

Despite these developments, we report that trademark filing under the new electronic trademark system remains operational. As of the date of this report, we continue to process re-registration applications as normal. This, however, is subject to any future changes affecting internet connectivity and communications in Myanmar. Please note that there were intermittent disruptions of internet service over the past few days.

The Office of the Registration of Deeds and Assurances, where Declarations of Ownership under the "old" trademark system are filed, is also open and operational. That said, in-person filing remains challenging because of COVID-19-related restrictions that are currently in place, in addition to the present general state of security in Yangon.

Moreover, the timeline for processing the registration of Declarations of Ownership remains uncertain because of the heavy workload being reported by the Office of Registration of Deeds and Assurances. This makes the filing of Declaration of Ownership an uncertain option at this time, particularly in view of the upcoming presumptive deadline for transition to the new trademark system on 31 March 2021 (please see our January update for further reference). There has been no official confirmation if this upcoming deadline will in fact be enforced. For new trademarks, we recommend considering alternative means, such as the publication of a cautionary notice, in order to prepare marks for transition.

Please contact us if you have questions or concerns.

Myanmar Trademark Update

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Myanmar commenced the “soft launch” of its new trademark system on 1 October 2020. As we kick off the new year, we provide this brief update about the progress of the soft launch and what to expect in the next few months:

1. Pending applications

The soft launch of the new trademark system is underway, although the online system is currently operating at limited capacity. For example, it is still not possible to submit power of attorneys or authorization forms (TM2) online. Similarly, the payment function is still disabled. We understand that these features and functions will be enabled at a later time, closer to the end of the transition period.

Further, the Myanmar IP Department recently clarified the following details with regard to applications under the new system:

  • Series marks will not be allowed.
  • Colour claims will be available, and the applicant must specify which colours are being claimed. If colours are not claimed, the representation of the mark will be in black and white.
  • It is noted that under the old trademark system, it was common practice to register trademarks together with the product packaging and other trade dress elements. Under the new system, the examiners expect only the dominant features of the mark to be subject to re-application.

Below is an example of how this particular rule may apply:

Mark previously registered under a Declaration of Ownership

Mark for re-application under new trademark system

Box with ABC label

ABC


  • Applications submitted will be issued an application number, although they will remain pending until the payment of official fees.
  • Trademark searches under the new system is currently not available, although this functionality will be enabled further along the transition.

2. Transition period

While the official announcement of the Myanmar IP Department did not provide a clear deadline on when the soft launch will end, earlier discussions suggest that it may last until 31 March 2021, with the possibility of an extension. We recommend clients to keep this in mind as we move along the first quarter of the year.

3. Official fees

The official fees for trademark services and applications have yet to be officially announced. We understand that it is the intention of the Myanmar IP Department to keep the fees comparative with ASEAN neighbors. For reference, a recent survey of fees in ASEAN countries puts filing fees in the vicinity of USD 100-150 (for one mark in one class).

4. Power of attorney

At the moment, applications under the new trademark system can be processed and submitted without submitting a POA and trademark authorization form (TM2). We understand that details and requirements surrounding this requirement has yet to be finalized and are still under consideration.

5. Registration of new marks and re-opening of Office of Registration of Deeds

We remind that only marks that have been previously registered or used in Myanmar can participate in the re-application process during the soft launch. In view of this, the Myanmar IP Department has clarified that new trademarks can still be filed under the “old” system of registering Declarations of Ownership, which remains available even after the soft launch.

In this connection, the Office of Registration of Deeds has re-opened on 19 January and is now accepting applications for the registration of Declarations of Ownership. We are in the process of preparing any pending applications for filing in the next few days. We expect newly filed declaration applications to be released in about 4-6 weeks. That said, this timeline will be subject to the volume of applications to be handled by the Office of Registration of Deeds as well as any changes to COVID-19 protection measures in Yangon.

For clients looking to register new marks in Myanmar, we can also recommend the alternative approach of publishing a Cautionary Notice in lieu of registering a Declaration of Ownership, in view of the continuing closure of the Office of the Registration of Deeds and as we move towards the end of March, which is the presumptive transition deadline.

We will continue to monitor developments and issue updates as they come. Should you have immediate questions or concerns, please feel free to reach out to any member of our team.

Bulletin updates on the new trade mark registration in Myanmar

The new Trade Mark Registration System was officially launched on 1 October 2020 as scheduled. The Myanmar IP Department (MIPD) held a live online session to commemorate the event.

The registration system has since encountered several issues and outages. The MIPD held a session on 8 October to explain the situation and announced that the system will be unavailable until 11 October as they conduct technical maintenance. The system has since resumed to normal operation as of 12 October.

From our use of the system, we can report the following concerns, issues and limitations:

  • To help manage bandwidth and system issues, the MIPD has limited the issuance of user accounts having access to the system to one account per agent. Having a single account severely impacts the rate at which we can process and complete applications, and we ask clients to bear with us as we deal with this limitation. We are hopeful that more user accounts would be issued in due course.
  • The system has a "traffic light" feature that automatically screens whether the specification of goods or services are lodged in the proper class. Specifications that are deemed acceptable for the class are highlighted as green. Where there is inconsistency whether the specifications will be accepted for the class, the specifications will be featured in amber. Specifications which are deemed unacceptable for the class will be featured in red.
  • It appears from our testing that most specifications tend to be categorized as amber at the moment, despite being acceptable in various other countries. We suspect this may be due to technical teething issues. Hopefully, the system will accept more specifications after further use. Note that applications can be submitted even though the specifications are featured in amber or red, subject to the caveat that items in red will likely face objections. We are monitoring developments closely and will continue to issue updates.

Should you have any questions please do not hesitate to get in touch.

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.
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