Myanmar Update: prepare for the new Trademark System

Myanmar’s Trademark Bill is currently being considered by the Lower House of the Myanmar Parliament. Notwithstanding speculations that the Bill may be passed as early as in June 2018, there is to date no official indication or announcement on when will the Bill be enacted into Law. After the enactment of the bills into law, the Myanmar President’s assent will need to be obtained before it enters into force. After this legal procedure, a Trademark Office will need to be established before applications under the new framework will be accepted.

Based on multiple consultations with high-level officials of the government involved in the planning and implementation of the new IP framework, the authorities are still in the midst of considering available options to ensure a smooth transition from the current system based on Declarations of Ownerships and cautionary notices, to the new IP system envisioned under the new law. However, there is no definitive guidance available yet. The fees and costs, as well as exact proceedings of implementation, are still not known.

It is important to note that the present Law does not provide for a grace period or transitionary period for trademark owners who have recorded Declarations of Ownership to claim their trademark rights under the new law. No right of priority is provided under the Law. It merely states that trademark owners who wish to obtain protection under the new act are required to file new trademark applications; and that copies of Declarations of Ownership recorded in the past can be submitted during the filing stage under the new trademark registration procedure.

It is unclear as to the extent in which the trademark office will consider such declarations, and the weight the declarations will carry during the examination process. We will need to wait for further guidance on this, perhaps through subsidiary legislation after the enactment of the bill into law.

Taking into account this situation, we recommend to continue protecting trademarks under the current recordal framework, through registering Declarations of Ownership before the  Registration of Deeds, in case original copies of such declarations need to be filed to the registrar at the time of filing.

Currently, Trademarks can be registered with the Office of Registration of Deeds by way of a Declaration of Ownership. It is also possible to include thereto priority information, which may be useful in future proceedings. According to this system, upon registration, which may take up to two months, a serial number will be assigned. According to this old system, whilst not mandatory it is also customary for trademark owners to publish cautionary notices in local newspapers/journals upon registration of their Declarations of Ownership, and every three years thereafter.

If you have existing distributors or licensees in Myanmar you may also want to relook at the governing contracts in the meantime, as it is anticipated that all trademark licenses must be recorded with the registry once the new law comes into force.

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