In anticipation of Myanmar’s new trademark law

31 October 2020

In anticipation of Myanmar’s new trademark law

Through the establishment of a proper, structured and comprehensive trademark registration and protection system where trademark applications can be filed through an online portal, Myanmar’s new trademark law replaces the existing recordation practice of a Declaration of Ownership filed manually through the Office of Registration of Deeds.

The long wait is finally over. After more than 25 years, Myanmar has finally come out with its new trademark law, beginning with a soft opening on October 1, 2020, and soon, its formal launch.

Unlike before, when the trademark office or modern trademark laws didn’t exist in Myanmar, when the business community relied solely on best practices developed based on other laws to record and protect trademarks, this new law offers significant changes. As there has never been a formal trademark registration system and registry in place in Myanmar, this new legislation allows brand owners to avail themselves of a modern IP regime in line with international standards, ideal for both local and international businesses who wish to protect their IP rights.

“The new law will greatly enhance the ability of brand owners to protect their trademarks,” says Daniel Greif, director and senior trademark attorney at Schmitt & Orlov in Bangkok.

Greif, who assisted on providing insights and proposed drafting of the new Myanmar law for the past decade, said the new law provides clarity and certainty in the registration and protection processes. “These enhanced processes will provide greater certainty to businesses as to the investments they make on brands and other intellectual property. Thus, companies will be more willing to invest in Myanmar as their trademarks and other intellectual property assets will be well-protected.”

He adds: “As I have seen in other countries where I have lived and worked during my career (such as Eastern Europe, Russia, the former Soviet Union and China), positive intellectual property developments such as the new Myanmar trademark law act as a catalyst to further investment and commercial activity, which in turn benefits consumers. I see the implementation of Myanmar’s trademark law as a great day for Myanmar and the people of Myanmar. I am very happy this day has finally arrived.”

 

In Myanmar’s modern history, the country has found it challenging to provide specific legal provisions on and protection of IP rights. Over the years, the country has engaged with international organizations and treaties to bring such IP rights to the country such as becoming a World Trade Organization (WTO) member, thereby agreeing to the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS), which mandates WTO member nations to provide comprehensive protection for IP. Moreover, on May 15, 2001, Myanmar also joined the World Intellectual Property Organization (WIPO), which has also required the country to provide a level of protection to IP rights holders.

Myanmar has also worked domestically to provide IP rights to the country’s businesses. Although without a regulatory framework specifically protecting trademarks, Myanmar has required a Declaration of Ownership of Trademark from all potential trademark owners, in accordance with Section 18(f) of the Registration Act 1908. On January 30, 2019, the Myanmar parliament finally enacted the trademark law.

 

The new trademark law

This new law introduces a modern registration system for trademark filings in Myanmar, one which is online and allows e-filing, through a system called IPAS. Through the establishment of a proper, structured and comprehensive trademark registration and protection system where trademark applications can be filed through an online portal, this law replaces the existing recordation practice of a Declaration of Ownership filed manually through the Office of Registration of Deeds. In addition, the law replaces the current first-to-use system with a first-to-file system.

Instead of a using a power of attorney (POA), the TM2 Form (Appointment of Representative) is used in the new system. This form will be issued by the concerned ministry at a later date.

 

While the law brings Myanmar’s legal regime more in line with modern international practices, it remains to be seen how specific regulations are applied in practice – and how they are interpreted by the courts. While there are provisions for specialized IP courts to be set up, the deep and specialized knowledge required may not yet be widely available in Myanmar.

It is hoped that after the implementation of the trademark law, trademark rules will soon follow.

But because the law is a landmark piece of legislation for Myanmar, the concepts are new to the business community and to regulators as well, so familiarization with the concepts and practices may take some time.

Ling Yi Quek, resident partner at Dentons Myanmar in Yangon, says that the key challenge of this new law is in relation to trademarks previously acceptable under the old law but which will not be registerable under the new law, such as marks that lack distinctiveness. “We would typically advise trademark owners who have filed their trademarks with the ORD previously to evaluate their trademarks before the new trademark law is implemented, and take necessary steps to revise their trademarks so that they may be registrable under the new law,” she says.

Other challenges may come from inconsistencies, as this law is still relatively new in Myanmar, and from the use of the IPAS system.

Yuwadee Thean-ngarm, director of the Tilleke & Gibbins office in Yangon, says: “In changing the current manual and first-to-use system to the new online and first-to-file system under the new trademark law, we foresee challenges with the use of the IPAS system,” she says. “In particular, many disputes regarding similar trademarks may arise after the implementation of trademark law. For this reason, to resolve those challenges, the government and relevant ministries have held frequent consultations with legal and other experts, both local and international.”

 

Greif adds that as with any new law – and particularly as the law being implemented is the first trademark law in Myanmar – it is likely there will be inconsistencies, errors, and a large learning curve at the Myanmar Trademark Office. “There will be many challenges for brand owners and their trademark lawyers to address the challenges that arise and to ensure that brand owners correctly get their trademark rights in order,” he says.

To move forward with this trademark law, Minn Naing Oo, managing director and partner at Allen & Gledhill (Myanmar) in Yangon, says that the soft opening of the registry is open to trademark owners who have availed themselves of Myanmar’s old registration system by filing a Declaration of Ownership of their mark, and to trademark owners whose marks have been in actual use in Myanmar whether previously registered with the Office of Registration of Deeds or not.

“Before the soft launch, it is advisable for parties to record Declarations of Ownership for the marks of interest in order to qualify for a ‘soft opening’ application once the re-registration facility opens,” he says. “In the absence of this and substantial evidence of use of the trademark in Myanmar, new applications can only be filed under the new filing system after the official launch of that system, which is anticipated to take place much later in 2021. As details of the refiled marks are supposed to mirror those filed under the existing system, it is also advisable to record amendments to any changes to the applicant’s name or address or assignments of marks under the current system before the soft opening phase takes place.”

In cases where the brand owner has recorded their rights under Myanmar’s previous system and are in possession of documentary evidence of prior registration of their trademarks under the current system, they should ready themselves with the necessary documents and information in anticipation of the soft opening phase as set out below and re-file their trademark applications to protect their marks once the law takes effect. Further details of the official fees, specific documentation and information required are expected to be released through a separate notification before the soft opening phase begins.

Greif adds that from a trademark perspective, it is imperative for brand owners to register as soon as possible under the new law.

 

“With the greater efficiencies provided under the new law, investment opportunities will grow and there will be many trademarks filed in Myanmar,” he says. “Inevitably, there will also be many pirate trademarks filed as infringers will be looking for opportunities to register brands and seek ‘compensation’ from the rightful owners. Thus, all brand owners should evaluate their current, mid-term, and long-term business plans in Myanmar and determine what trademark to register to pursue their business propositions.”

 

The impact to businesses

Investors and trademark owners are excited that the trademark law covers trademark owners’ rights in accordance with international standards and systems, as there has been an absence of specific provisions for IP rights in previous decades. This new law allows them not to infringe the IP rights of others.

“The trademark register will contain a proper database of registered trademarks,” says Quek. “Business or brand owners will be able to conduct a trademark search and be assured that they are not creating a trademark that already exists or that may be confusingly similar to an existing trademark.”

She adds that trademarks registered in Myanmar can receive better protection as the new law provides a proper objection procedure and stipulates penalties for infringement or misuse. “Trademark owners can stop third parties from filing trademarks which are similar to theirs through an opposition procedure,” she says. “Trademark owners can enforce their rights under the new law, which specifies penalties for the misuse or infringement of trademarks.”

“With the implementation of the law, there will be more certainty in relief that may be sought in the case of infringement of trademarks flowing from a clear statutory title to the trademarks owned by brand owners, making Myanmar’s market more attractive to enter,” says Minn Naing Oo. “The law sets out both civil and criminal liability for trademark infringement and also sets our provisions for enforcement through Customs. Foreign brand owners can therefore start reviewing their brand protection strategy in Myanmar with better promise of relief based on their trademark rights, and explore opportunities in Myanmar more confidently.”

 

Khin Zar Chi Kyaw Win, an attorney at Tilleke & Gibbins in Yangon, adds that following international standards, the new trademark law will be equally effective and beneficial to both investors and businesses because it will guarantee trademark rights.

“Both foreign and local investors have faced many difficulties in the absence of specific legal provisions for trademarks,” she says. “Before this new law, any person who had their trademark rights infringed could take action and recourse under certain sections of the Penal Code, the Registration Act 1908, and the Specific Relief Act of 1877.”

 

The Future of the new trademark law

Given the many changes of the new law, coupled with increased strength to protect the trademarks of brand owners, Thean-ngarm says the new law will change the way trademark owners do business. “Trademark owners will be able to fully protect their own trademarks after the implementation of new trademark law,” she says. “This is something that owners, investors and businesses do as they will enjoy statutory protections against various infringements of their trademark rights.”

For her colleague, Khin Zar Chi Kyaw Win says: “We anticipate that the current situation of increasing the number of Covid-19 cases in Myanmar will not affect the soft-opening period, as the new system will be online.”

Quek agrees that the new trademark law is expected to better protect rights of brand owners and trademark proprietors. “With more specific regulations and clearer rules, the new law is certainly a development welcomed by businesses and brand owners. This may encourage more businesses and brand owners to enter the Myanmar market. We can expect the new registration system to be more effective, especially given the clearer regulations and the centralized database. First, it allows brand owners to better comply with the law. Second, infringements and misuse can be more easily detected and hopefully deterred.”

She adds: “Myanmar’s Trademark laws and trademark registration process would be more aligned with the rest of the world upon implementation of the first-to-file system under the new Trademark Law. I would take a big picture approach to look at the future of Myanmar as a whole instead – and they are certainly catching up with the rest of the world!”

 

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