The long-awaited Myanmar Trademark and Geographical Indication Law was passed by the Lower House on December 12, 2018 following its adoption by the Upper House on February 15, 2018. The new law is likely to be enacted at the end of December 2018 or within the first quarter of 2019.
Among several notable changes, the new law introduces a "first-to-file" system that requires no evidence of prior use or ownership in Myanmar. The law significantly improves the ability of trademark owners to counter bad-faith trademark squatting and, in cases where infringement is found, provides higher potential damage and fine amounts and customs actions. In addition, the law introduces substantive examination of applications, oppositions, invalidation and cancellation actions, and envisages establishing a specialized Intellectual Property Court to handle all IP disputes. The new law also clarifies protection for “well-known” trademarks, provides trademark publication and renewal, makes available multi-class applications and priority claim, and extends the availability to register shape and packaging as trademarks. Geographical indications (e.g. Champagne, Cognac) are also protected through registration.
There is no procedure for automatically re-registering marks which are recorded under the current system. Therefore, marks and geographical indications currently recorded with the Registry of Deeds and Assurance must be re-applied for once the law enters into force, otherwise they will lose their validity. This is according to Section 92 of the new law, “The trademark owner who has registered at the Office of Registrar of Deeds and Assurances in accord with the Registration Act before this law is coming into force, desirous of enjoying the rights of the registration of mark, shall file an application in accord with this law to get the rights of registered mark.” The transition period to re-apply for a mark or geographical indication will probably be three to six months after the law is enacted/entered into force.
The documents required to re-filing marks are:
- Completed application form provided by IP Office;
- Original duly recorded Declaration of Ownership of Trademark at the Registry of Deeds and Assurances;
- Evidence of use may also be required such as photo of the product/shop in the Myanmar market or Customs Clearance;
Other IP laws are also expected to be enacted soon by the Lower House.