Myanmar’s new trademark regime establishes first-to-file system
28 March 2019
On 30 January 2019, the Myanmar Parliament passed the Trademark Law (“Law”) but it is not yet in force. The date of commencement of the Law will be set when the President issues a Notification.
The Trademark Law signifies the inception of Myanmar’s modern intellectual property regime. Previous to the passing of the Law, businesses have had to rely on colonial-era laws to protect their intellectual property such as the outdated Burma Copyright Act 1914 and a definition of “trademark” in the Penal Code 1861.
The Patent Law has also been passed on 11 March 2019 while the draft law on copyright is still awaiting Parliament’s approval. This suite of laws, once every one of the laws is passed and promulgated, is expected to bring Myanmar in line with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), an agreement between the member nations of the World Trade Organization (WTO).
What you need to know
- The Law replaces the current first-to-use system with a first-to-file system, aligning Myanmar with other ASEAN countries. The first-to-file system grants the right of registration of the mark to the person who files his application which has been prepared in accordance with the requirements stipulated under the Law first.
- Applications to register a mark can be made in either English or the Myanmar language, though a translation may be requested by the Registrar.
- A registered mark is valid in Myanmar for 10 years from the filing date of the application to register the mark. The mark can be renewed for a further term of 10 years after the expiration of its current 10-year registered term.
Overview
The Law states that its objectives are to develop investment, trade and commerce by protecting marks, to protect the interests of the proprietor of the marks and to create fair market competition and a safe environment for the public by preventing trademark infringements and flow of counterfeit products into the market.
The Law provides for more than the registration and protection of trademarks. The provisions of the Law apply to trademarks, service marks, collective marks, certification marks and geographical indications.
Definitions
The Law defines “mark” as any visually perceptible sign which is capable of distinguishing any goods or services from other goods or services including personal names, alphabets, numerals, figurative elements or combinations of colours or any combination of a sign with another thereof. A “mark” includes a trademark, service mark, collective mark and certification mark.
There are separate definitions in the Law for trademark, service mark, collective mark and certification mark. “Trademark” is defined as a mark capable of distinguishing goods of one undertaking from those of other undertakings in the course of trade.
References to the Registrar in the Law and in this Alert refer to the Director General of the Intellectual Property Department carrying out the functions of the registration of intellectual property rights.
New registration system
First-to-file system
The Law replaces the current first-to-use system with a first-to-file system, aligning Myanmar with other ASEAN countries. The first-to-file system grants the right for registration of the mark to the person who files his application which has been prepared in accordance with the requirements stipulated under the Law first. Where applications to register a mark which are identical or similar are filed on the same day, the Registrar shall direct the applicants to negotiate amongst themselves as to who proceeds with the application. Where parties cannot agree, they shall abide by the decision of the Registrar. The Law does provide for a right of priority, meaning that where an applicant had filed an application for registration of that mark in any member state of the Paris Convention or the World Trade Organization, that applicant shall have priority in registering that mark in Myanmar. The right of priority extends to applicants who have exhibited goods bearing the mark or provided services under the mark in any member state to the Paris Convention or the World Trade Organization. This is consistent with other countries who adopt a first-to-file system.
A trade name is protected without registration, whether or not it forms part of the mark, as long as the trade name is not composed of a name or designation that is contrary to public order or morality or liable to deceive the public as to the nature of the enterprise identified by that name.
The Law states that owners of marks registered at the Office of the Registration of Deeds, prior to the enforcement of the present law, must re-apply for registration pursuant to the terms of the Trademark Law. Marks, whether registered with the Office of the Registration of Deeds or not, that are used in a State’s market shall enjoy the right of priority for that mark.
Application process
Applications to register a mark can be made in either English or the Myanmar language, though a translation may be requested by the Registrar. The Law stipulates that together with the application, the applicant must also submit specific documentation relating to the type of right which is claimed. For example, if a priority right is claimed, supporting documentation must be provided. If the applicant is a legal entity, the application must provide the registration number, type and country of the entity.
Should an application to register a mark be found to be inconsistent with the requirements specified in the Law, the Registrar will inform the applicant who shall then have 30 days to refile. The application will be considered withdrawn if this timeframe is not met. The Law does, however, allow the applicant to refile in such a situation.
Approved applications are published. Those who wish to oppose the registration of a mark have 60 days from the date of publication to submit their objections to the registration.
Term of registered mark
A registered mark is valid in Myanmar for 10 years from the date of filing of its registration application. The mark can be renewed for a further term of 10 years after the expiration of its current 10 year registered term. The registered owner of the mark is afforded a six-month grace period to re-register the mark, subject to the payment of overdue fees in addition to the registration fees. Renewal of the mark takes effect from the date of expiry of the mark.
The Law allows the registered owner of the mark to transfer ownership to another person or entity upon successful application. The owner of the mark can also license the use of the registered mark. Licensing must be recorded with the Registrar and a fee paid.
Invalidation and cancellation
The Law provides for the invalidation and cancellation of registered marks where the mark is found to be inconsistent with the definition of a registrable mark, falls under an absolute ground for refusal (such as a lack of distinctiveness) or falls under a relative ground for refusal (such as a mark which may mislead customers due to its similarity to another registered mark).
Formation of new official bodies
Formation of Intellectual Property Rights Agency
The Law stipulates that the Government Central Committee shall form the Intellectual Property Rights Agency (“Agency”). The Law prescribes the positions to be filled in the Agency, including noting that no more than eight intellectual property rights experts are to be appointed.
The Agency is tasked with a range of functions and duties including the following:
- Implementing trademark-related policies, strategies and programs.
- Providing recommendations to the Central Committee regarding acceding to particular conventions, treaties and agreements relating to trademarks.
- Implementing provisions of conventions, treaties and agreements relating to trademarks.
- Forming of necessary working committees to take action on trademark infringements and carry out other functions as may be set out.
Formation of Intellectual Property Department
The Ministry of Commerce will create an Intellectual Property Department (“Department”) to carry out the functions and duties as stipulated for such an entity in the Trademark Law. The Department’s functions and duties include the declaration of registration processes, keeping and maintaining the Register, and supervising the functions of divisions established respectively for each field of intellectual property right. As mentioned above, the Registrar as referred to in the Law is the the Director General of the Department. It is also stipulated that the holder of this post will also hold the post of Secretary to the Agency.
Establishment of Intellectual Property Court
The Law empowers the Union Supreme Court to establish an Intellectual Property Court to hear intellectual property cases. It also sets out the powers the court shall have including the ability to adopt provisional measures without the other party being heard where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed.
Offences and penalties
Where a person is convicted of having, for a commercial purpose, forged a mark, used a forged mark in products or services or possessed any materials or tools used in forgery, he shall be liable to imprisonment for a term not exceeding three years or to a fine not exceeding five million kyats or both.
The sale and distribution of goods for commercial purposes using a forged mark or possession of goods bearing a forged mark with the intent to sale and distribute attracts a penalty upon conviction of a term of imprisonment not exceeding two years or a fine not exceeding five million kyats or both. The import or export of goods bearing a forged mark for commercial purposes attracts the same liability.
A repeat offender of the offences listed above shall, on conviction, be punished with imprisonment for a term of at least three years and up to 10 years or with a fine not exceeding 10 million kyats.
Other features
Geographical indications
The Law also affords protection of geographical indications through registration. The term “geographical indication” means goods which originate in particular territory of a country, region or a locality in that territory, where a special quality, reputation or other characteristics of the goods is essentially attributed to its geographical origin.
Importation of goods using counterfeit marks
The owner of a mark may apply to the Director-General of the Customs Department for the issuance of a suspension order in relation to goods where the owner has sufficient grounds for suspecting goods bearing counterfeit versions of their marks have been or are being imported into Myanmar. The procedure following such suspension order is detailed and set out in the Law.