On 31 January 2019, the new Trademark Law was enacted in the Republic of the Union of Myanmar (hereinafter, “Myanmar”). The framework of the new Law is based on a first-to-file system for registration of trademarks and, therefore, the first to secure registration will be the first to obtain trademark rights in the country.
Myanmar has not had a specific trademark law until now. Instead, trademark owners could take precautionary measures to protect themselves against potential infringement and for purposes of evidence of rights. The measures generally consisted of recording a Declaration of Ownership (DTO) in an official register, which was followed by the publication of a Cautionary Notice in a local newspaper. It was recommended to adopt precautionary measures approximately every 3 years.
The new Law has not yet entered into force and further steps are pending on a legislative, organizational, administrative and structural level, including the establishment of the Intellectual Property Office. Therefore, it is not yet possible to file trademark applications and it is not clear how long it will be until the Office is operational. No official fees have been set nor is it known if the registration system will multiclass or a one class system. There are still important issues to be clarified.
Nevertheless, in view of this new opportunity provided by the new Law, trademark owners with interests in Myanmar ought to begin reviewing their portfolios and taking the appropriate strategic decisions with regard to the protection of their marks, with a view to trying to obtain a filing date as soon as the Intellectual Property Office is up and running.
It is important to keep in mind that according to our sources, it is highly likely that there will be NO Sunrise Period and that previous recordals of DTOs will not be taken into account. Consequently, trademark owners who have previously adopted precautionary measures and have DTOs on record, will not be able to benefit from the earlier protection obtained, and in order to protect their marks, they will have to file new trademark applications at the Myanmar IPO under the new Law.
As for trademark owners who have never obtained protection for their marks in Myanmar and now wish to do so, they should begin taking the pertinent decisions and making enquiries regarding the necessary preparations.
It is very important to bear in mind that Myanmar does not have any consular representation in Spain and that documents such as, for example, powers of attorney and authorizations required for steps to be taken at the new Intellectual Property Office, will have to be authenticated by the consular representation of Myanmar in another country, which may entail considerable delays. As far as Spain is concerned, the nearest Myanmar consular representation is in Paris, France.In case it may be of interest to you, we are attaching a link to information: “Myanmar: Upcoming opening, in January 2020, of a “Soft Opening” period for owners of trademarks recorded at the Office of Registration of Deeds”.
Author: Cristina Arroyo
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