A new legal framework in Myanmar has been announced for trade mark registration and protection, impacting upon both foreign and domestic trade mark owners.
Background & the current system
Prior to the new legal framework, under statutory law trade mark owners in Myanmar had to record their marks with the Office of Registration of Deeds (ORD).
The new trade mark laws will be formally introduced this month, January 2020, through a ‘Soft Opening’. At this time, existing trade mark declarations and notices filed under the previous system will no longer be sufficient to demonstrate ownership of marks in Myanmar.
To maintain trade mark protection in Myanmar and avoid losing rights under the new legal framework, all existing mark owners in Myanmar must file new applications during the ‘Soft Opening’ from January 2020. The ‘Soft Opening’ period will last a period of 6 months from the first day of its introduction.
To qualify for re-filing during the ‘Soft Opening’ there must be an existing declaration or notice under the previous system.
Existing Myanmar trade mark owners
We recommend that trade mark owners with existing protection in Myanmar speak with Griffith Hack to ensure their trade marks are correctly re-filed under the new system during the ‘Soft Opening’ period.
Note that re-filing is not an automated process and further fees will apply.
Below is an overview of the required documents for re-filing existing trade marks rights in Myanmar:
1. Legalised Power of Attorney
2. Declaration of Ownership, registered under the existing law
3. Caution Notice (if published)
Importantly, if any amendments to the existing trade mark(s) rights are required (such as name/address change or assignment), the trade mark must be filed as a new application in the ‘Grand Opening’ which is expected to commence from July 2020.
If you do not currently have any trade mark protection in Myanmar and require it, new applications cannot be filed until the ‘Grand Opening’ period commences.
The fact that Myanmar will adopt a ‘first to file’ approach when filing new trade mark applications makes the impending changes especially relevant and time sensitive. The first person (or company) that files the trade mark is generally granted the right to that trade mark, irrespective of an unregistered marks’ prior use. In Myanmar the classic case of ‘first in, best dressed’ will therefore apply.
If you have an existing declaration or notice in Myanmar for your trade mark or are interested in obtaining trade mark protection in Myanmar in the future, please get in touch with one of Griffith Hack’s trade mark attorneys.