Myanmar: Reforming Myanmar's Intellectual Property Laws

The Myanmar government is currently reforming its outdated intellectual property (IP) regime. The Ministry of Education, Science and Technology has prepared four draft IP bills (new IP laws)—the trademark law (TL), industrial design law (IDL), patent law (PL) and copyright law (CL)—in cooperation with the Union Attorney General's Office and other government ministries.

The new IP law drafts were finalized by the previous Union Solidarity and Development Party (USDP) government in 2014 to encourage foreign investment. However, these IP laws are still in the bill stage and are not yet law. The new IP laws are presently under deliberation by the legislative committee of the Pyidaungsu Hluttaw (Myanmar's parliament) and are expected to be promulgated by the end of 2017. The body of implementing regulations will take a further three to six months to pass following enactment.

Myanmar's new IP laws are based on best international IP practices, IP laws of other ASEAN nations, the Agreement on Trade Related Aspects of Intellectual Property Rights and the Ministry of World Intellectual Property Organization recommendations.

Presently, IP protection in Myanmar is inadequate for foreign investors. There are no specific trademark or IP laws other than the Burma Copyright Act 1914, nor any specific provisions concerning the registration of trademarks. While there is a definition of "trademark" under §478 Penal Code 1861, this provides little guidance or protection. The lack of an IP regulatory framework has resulted in a customary protection practice developing, whereby the trademark owner makes a declaration of ownership and then registers this declaration with the relevant Office of Registration Deeds (ORD). In cases of infringement, foreign or domestic investors will present this declaration to the Myanmar authorities. Currently, foreign investors rely on this practice to enforce their IP rights.

Here is a summary of what you need to know about the new IP laws:

Trademark Law

The TL establishes the legal basis for the application, examination and registration of trademarks and is based on the first-to-file principle. Under the TL, the following marks can be protected: (i) smell and touch signs; (ii) visual marks; and (iii) perceivable sound.

Registration as a group/collection of marks will be allowed. Domestic and foreign brand owners can also apply for registration. However, foreign applicants will have to appoint an authorized agent, and this agent must reside in Myanmar. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office (MIPO) on their behalf. The MIPO will be established to oversee operations under the new IP laws. Specialized IP courts will also be created to deal with enforcement and infringement.

The TL will allow the trademark applications to claim priority over foreign applications/registrations. The registration process includes:

  • Filing of an application (application must be filed in English or Myanmar language and have a declaration of intention to use)
  • Substantive examination and other formalities
  • Publication for opposition
  • Issuance of a certificate

The duration of protection of registered trademarks will be 10 years from the effective filing date. Each renewal will extend the validity by another 10 years.

The TL contains civil and criminal liabilities for infringements in Myanmar. Such liabilities for a criminal offence may be punishable by a maximum of up to three years of imprisonment or fines or both.

Industrial Design Law

Current Myanmar law does not deal specifically with "industrial design." Owners only have limited protection by filing a declaration of ownership with the ORD, followed by publication of a cautionary notice in a newspaper to advise the public of design ownership.

An "industrial design" is defined under the IDL as an appearance, in whole or in part, of any industrial or handicraft product and features representable by lines, contours, colors, shapes, textures and/or materials of the product itself and/or its ornamentation.

An industrial design will receive protection under the IDL if it meets these two requirements:

  • Novelty or new
    • An industrial design is considered new if it has not been disclosed to the public in Myanmar or overseas. An industrial design will lack novelty if it is identical or substantially the same as an existing design. The IDL also indicates that an industrial design will not be considered as new if it merely combines features of other designs.
  • Design is not excluded from protection. The IDL provides for certain exclusions, including:
    • Industrial designs that are merely differentiated by technical or functional aspect
    • Industrial designs that are contrary to public order, moral, faith or the cherished culture of Myanmar

Applications for registration can be submitted in English or Burmese. Applications from a Paris Convention country or member state of the World Trade Organization will be accepted for registration, provided that the application is filed within six months of the first-filed application overseas. Publication of the application will be performed in accordance with the Myanmar industrial design regulations.

Any third party may file an opposition with the registrar within 30 days of the publication date of the industrial design application. The applicant of the industrial design application will be provided with an opportunity to file a counter statement to the opposition, and a hearing may be held before the registrar. Decisions made by the registrar are appealable to the director general within 60 days of the publication of the decision.

An industrial design, once registered, will have an initial term of five years from the filing date of the application. This initial term may be extended twice by five years for a total maximum term of 15 years. The owner of the registered industrial design will have the exclusive right in Myanmar to make, use, sell, offer for sale and/or import any product having the registered industrial design. The owner will also have the right to transfer or license the registered industrial design, but such transactions must be registered in writing with the MIPO.

An owner of the registered industrial design may pursue civil and/or criminal action for industrial design infringement. Injunctions are also available upon application to the relevant court. Additionally, the owner has a right to transfer or license the registered industrial design and must record such transactions with the MIPO.

Patent Law

To register any patent, the patent application must be filed with the registrar. The PL allows Myanmar patent applications to claim priority to a first-filed patent application of a Paris Convention country so long as the Myanmar patent application is filed within 12 months of the first-filed patent application.

Once a patent is granted, the patentee will have the exclusive right in Myanmar to make, use, sell, offer for sale and/or import the invention contained in the patent. The patentee will also have the right to prevent others from making, using, selling, offering for sale and/or importing the invention contained in the patent, as well as the right to assign the patent to others.

A patentee may pursue civil action and/or criminal action for patent infringement.

Copyright Law

Under the CL, "copyright" is defined as the exclusive rights of the author of a literary and artistic work. The CL also introduces exclusive rights of performers, producers of phonograms, as well as broadcasting organizations. Original works are also protected by copyright.

The CL provides protection of the original works of a person who is a citizen of Myanmar, or has a habitual residence in Myanmar, or has habitual residence in a member country. "Member country" means a country that is a member of a convention, treaty or agreement relating to copyright to which Myanmar is also a member; or any country which is a member of any international or regional organization related to such convention, treaty or agreement. Such provisions are a reflection of Myanmar's obligations under the ASEAN Framework Agreement on Intellectual Property Cooperation.

Registration of copyright is not mandatory. If an author or owner wishes to register their copyright, they may file an application at the MIPO. If the registrar grants the registration, it will issue a certificate of copyright registration to the applicant. In general, a term of protection of a work created by an author is the lifetime of the author plus 50 years.

A copyright owner has the exclusive right to reproduce, translate, adapt, arrange, transform, modify and/or distribute the original copyrighted work. A copyright owner also has the right to transfer, assign or license said rights to others. If a registered copyrighted work is transferred, assigned or licensed to others, the applicable agreement must be registered at the MIPO.

There are also exceptions to a breach of copyright, these include:

  • Use of a copyrighted work without authorization of the copyright owner will not be deemed copyright infringement if done for the sole purpose of private study, research, critical review or summary in news media
  • Reproduction of copyrighted work in an appropriate quantity that specifies the name of the author and source in the form of a reference or credit will not be deemed copyright infringement
  • Access to copyrighted work in a library for education purposes
  • Copying of a computer program without authorization will be permitted for the purposes of retaining an original copy as purchased, and/or the backing up of data to prevent loss or damage, providing this is for a consumer's own use

Under the CL, a copyright owner may pursue administrative action, civil action and/or criminal action for copyright infringement.

Outlook

Generally, the impact of the new IP laws on businesses will be positive. The new IP laws will create a simple, uncomplicated and cost-effective system of IP registration. This will be beneficial to all foreign and domestic businesses who wish to protect their IP, as it can be done cheaply and quickly by most small- to large-scale businesses. For the first time, the whole trademark application process will be clear.

In the long term, the new IP laws will work to protect both domestic and foreign brands. IP law reform will also send a clear message to international investors that Myanmar is serious about IP protection. The new IP laws are a promising step that will encourage further growth in Myanmar's retail trading, technology and manufacturing sectors.

For More Information

For questions about the new IP laws or to learn more about Duane Morris & Selvam and our Myanmar office, please contact Krishna Ramachandra or Rory J. Lang or visit duanemorrisselvam.com.

Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.