ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Myanmar

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Myanmar "Soft Opening Period"

After a sleepy few months for Myanmar’s new Trademark Law, no doubt as a result of the COVID-19 crisis, it seems that it is finally waking up. The Law provides for a procedure called the “Soft Opening Period” so that holders of rights acquired in their signs in Myanmar can register their trademarks on a preferential basis. Our firm has been publishing information on the development of this Law and on this procedure. The earlier articles in our blog can be accessed by clicking on the following links:

Myanmar "Soft Opening Period"  

Since the Law entered into force on 31 January 2019, various attempts have been made to put the Intellectual Property Office into operation. All efforts to date have been frustrated for one reason or another. The challenge of setting up an Intellectual Property Office from scratch in a country such as Myanmar, and the unfortunate situation that has developed worldwide over the course of this year following the spread of COVID-19, has caused considerable delays and brought this ambitious project to a standstill.

Following the successive failed announcements regarding the inauguration of the “Soft Opening Period”, first in January and then in April, the Myanmar authorities have announced a new date for commencing activities. If no circumstances hamper the government’s plans, this preferential procedure for registering acquired rights will open on 1 October 2020.

As we have mentioned in earlier articles, the new Trademark Law introduces the “first to file” principle for registration. So as to avoid potential detriment to rights acquired by owners of trademarks that have already been used in the Myanmar marketplace and/or complied with the formalities in existence up to now for the defence of trademarks in Myanmar, those parties will have 6 months, from 1 October and up to 31 March 2021, to apply for their trademark rights at the Intellectual Property Office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferential procedure is aimed at:

  • Holders of “Declarations of Ownership” recorded at the Office of Registration of Deeds.
  • Owners who have used their trademarks and have sufficient proof to demonstrate said use (for example, the publication of Cautionary Notices in newspapers).

ELZABURU has been following developments concerning the new Trademark Law from the very beginning and has a network of local agents who keep us informed and constantly up to date on the situation. We are therefore ready to accompany our clients in the process of protecting their distinctive signs in Myanmar, now as registered trademark rights.

 

Author: Cristina Arroyo

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Myanmar: Upcoming opening, in January 2020, of a “Soft Opening” period for owners of trademarks recorded at the Office of Registration of Deeds

After almost a year of work and preparations to define the scope and the implementation of the new Law, contrary to expectations, the Myanmar authorities have decided to open a prior transitional period in which those parties that have recorded a Declaration of Ownership (DTO) at the Office of Registration of Deeds (ORD) may file their trademark within a preferential term of 6 months prior to the official opening of the Trademark Register. This term has been designated a “Soft Opening period and its purpose is to enable holders of recorded DTOs to try to obtain a certain degree of priority.

While there is no official opening date for the “Soft Opening” period and many issues remain with regard to this procedure (for example, the amounts of the official fees are not yet known and it is not known whether powers of attorney must be legalized up to the Consul), it is expected to open in January 2020. Assuming that this date is met and there are no delays, those trademark owners who are entitled to and wish to take advantage of the “Soft Opening” period, will have until July 2020 to file their trademarks, while the Register will officially open for any interested parties in July. Any holders of recorded DTOs who have not taken advantage of the “Soft Opening” period will lose this preferential option and will have to file for registration to obtain their trademark rights once the Register has officially opened in the second half of the year.

In light of the above, there are three possible scenarios:

  1. Trademark owners with recorded DTOs. These owners are entitled to file their trademarks in the Register during the “Soft Opening” period, upon payment of a fee and compliance with all the formal requirements to attest to their ownership.
  1. Trademark owners who do not hold a recorded DTO. They could, up to the end of December 2019, try to record a DTO before the “Soft Opening” period opens, with a view to subsequently filing the mark within that preferential period. To that end, it is necessary to pay an official fee and satisfy all the formal requirements.
  1. Those interested parties who, from the opening of the Myanmar Trademark Register in the second half of 2020, wish to file an ex novo trademark application without any prior preferential right, under the provisions of the new Law.

In light of the above, and bearing in mind the short period of time remaining before the opening of the “Soft Opening” period and that it may be necessary to have powers of attorney legalized up to the Consul, it would be advisable for those trademark owners with interests in Myanmar to seek urgent advice to evaluate the steps to be taken in each situation.

In case it may be of interest to you, we are attaching a link to earlier information on the new Law in Myanmar: “Myanmar: first to file trademark system

Author:  Cristina Arroyo and Juan Miguel Sáinz de Marles

Visit our website: http://www.elzaburu.es/en

Myanmar: first to file trademark system

Source: Wikipedia

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

Visit our website: http://www.elzaburu.es/en

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