Obtaining Trademark Protection in Myanmar – Strategic Approach in view of New Regime
In Myanmar, there is no proper intellectual property registration system yet. The new Trademark Law was approved by the Myanmar President on 30 January 2019 but will not be implemented until the associated new trademark rules and regulations are established.
The new trademark rules and regulations are likely to be enacted sometime next year, i.e. in 2020.
In the meantime, trademark protection in Myanmar can be obtained by way of filing a Declaration of Ownership (DOO) and publication of the trademark via a Cautionary Notice in the main newspaper of Myanmar.
For those intending to obtain trademark protection in Myanmar, you should still file trademarks now, under the current regime. Having a trademark registration under the current regime would better allow you to claim “seniority rights” when re-filing your trademarks under the new regime after it is fully enacted. This is important, as, in the event of conflicting marks being filed under the new regime, the registry will look at who has the earliest rights.
Here come some important pointers for owners of Myanmar trademarks protected under the current regime.
Important pointers for owners of Myanmar trademarks protected under the current regime
(a) Ensure your trademarks are duly renewed
It is not mandatory, but highly recommended to renew your Myanmar trademarks every 3 years.
This can be done by way of re-registration once every 3 years after the first registration, by way of republication once every 3 years after the first publication, or by way of both re-registration and re-publication.
The latter approach, i.e. doing both re-registration and re-publication is the best way to fully safeguard your trademark rights in Myanmar, as it ensures the records of your registered mark is up to date at the Myanmar registry and also raises public awareness about your trademark rights, cautioning third parties against unauthorized use of your trademark. Ensuring current protection avails you to advantages resulting from “seniority rights” when re-filing under the new regime.
(b) Ensure that your trademarks are registered in the name of the intended owner, carry out recordal of assignments under the current regime where necessary
If your trademark is currently registered under your subsidiary or related company’s name, but you intend for the re-filed trademark under the new regime to be registered in your holding company’s name, then a recordal of assignment to transfer ownership of your trademark will need to be lodged now.
What needs to be done is to assign the trade mark now, and then later file a new application claiming “seniority right” under the new regime, after the new law and regulations are fully enacted.
The recordal of assignment must be done because both the earlier registration and later trade mark application must be under the same owner in order to claim “seniority right”.
Not performing an assignment prior to filing your new application under the new regime would expose you to the following disadvantages / risks:
- Trade mark examination rules under the new law are not issued yet, hence it remains unknown if there will be any procedures to submit old DOOs as registered by other owners for the purpose of proving the true ownership right of new applications filed;
- In the transmittal period from the old regime to the new law, old DOOs only remain effective for a certain time and are deemed unusable after that; and
- More pertinently, upon implementation of the new law, it will be impossible to assign the old trademarks since the old DOOs will neither be legally valid nor automatically recorded into the trademark database system under the new law.
With the inception of Myanmar’s modern intellectual property regime, it is important for those who are interested in obtaining trademark protection in Myanmar as well as current Myanmar trademark owners to understand how the changes in the regime affects them, to properly review their trademark portfolio, and follow up with necessary actions to ensure continued, good and valid protection for their Myanmar trademarks.
Check with us (Schweiger & Partners Singapore) if you have any further questions. If you need a trademark strategy in Southeast Asia, we can assist you.
I was about to send this email from an associate around, in December 2020. But then there was the sudden political change in Myanmar:
Shwe Moe (Mr.)
EMZ Legal & Accounting Services
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