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Myanmar’s Trademark Law Passes Lower House

Issued: February 14 2019

Myanmar’s long-anticipated Trademark and Geographical Indication Law is moving forward after passing the Pyithu Hluttaw, or House of Representatives, on December 12. The bill had passed the Pyidaungsu Hluttaw upper house of the Legislative Assembly, also known as the House of Nationalities, in February 2018.

According to Bangkok-based lawyers at Spruson & Ferguson, Myanmar’s legislative process requires that a bill be passed by both houses of the Legislative Assembly and given assent by the president, at which point the law will come into force on the day of its publication in the Government Gazette.

“The bill must still proceed though the requisite formalities of assent and publication before becoming effective,” said Saowaluck Lamlert, a senior trademark associate at Spruson & Ferguson in Bangkok, writing in a client update. “In this regard, we expect Myanmar’s long-awaited Trademark and Geographical Indication Law to be promulgated within the first few months of 2019.”

Lamlert says that the biggest change from what was proposed in earlier versions of the law is the lack of a re-registration process from the current system to the new system, along with a strict first-tofile system.

“The law does not provide for automatic conversion of registrations under the current régime to registrations under the new, and mark owners must file new applications to obtain protection for their marks,” Lamlert said.

Lamlert notes that it is expected that there will be a threeto- six month transitional period after the law’s promulgation, during which owners of registrations under the old system can re-register their marks.

“As the mechanisms of claiming priority in the new applications back to previous registrations remain unclear at this point, we strongly recommend that mark owners aim to file their new applications on the first day the law becomes effective or very shortly afterwards,” Lamlert said.

Baker McKenzie lawyers, wrote much the same thing in a similar client update:

“At this point in time, there does not appear to be a transitional provision in the new law which would facilitate the carrying over of current rights (under the Declarations of Ownership) into the new registration system. If this situation continues, existing trademarks are unlikely to receive automatic registration and protection once the new regime is implemented,” the lawyers wrote.

The client update advised trademark owners to review their brand protection strategy, ensure that applications for key marks in relevant classes are filed/refiled as soon as the new system is available; and audit portfolios to check that any housekeeping matters such as changes of name or address are managed.


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