Myanmar's long awaited Trade Mark Act (TM Act) has finally received the President's assent at the end of January 2019. This will hopefully make the Myanmar market more attractive for foreign brands to enter.
The TM Act is intended to harmonise Myanmar's trade mark laws and trade mark registration process with the rest of the world. The current first-to-use system will be replaced with a first-to-file system. Under the first-to-file system, where more than one person applies to register an identical or a similar mark, the Registrar will only allow the registration of the trade mark application which was (i) filed the earliest; or (ii) has the earliest priority right.
The informal process of registering a Declaration of Ownership pursuant to Myanmar's Registration Act 1908 with the Office of the Registration of Deeds will soon give way to a formal trade mark registration process. Owners of marks registered under Myanmar's Registration Act 1908 must file a fresh application to register their marks under the TM Act once it takes effect. While the implementing regulations are not yet available, and the weight of the registrations under Myanmar's Registration Act 1908 are currently unclear, it is likely that transitional provisions will be put in place to help owners of such earlier registrations secure protection under the new regime.
There is presently no formal indication as to when the relevant regulations will be released. In anticipation of the setting up of the Myanmar Trade Mark Register, we suggest the following:
- Review your trade mark portfolio to determine which marks you would like to register in Myanmar;
- Collate the relevant information and documents - in particular, for owners of trade marks which are registered under Myanmar's Registration Act 1908, locate and keep ready original copies of the duly stamped Declarations of Ownership; It would also be helpful to gather other evidence such as cautionary notice(s) and proof of use of your trade mark in Myanmar;
- Until there is greater clarity on when the TM Act will be implemented, continue maintaining your rights and interests in your marks registered under Myanmar's Registration Act 1908 by (i) routinely re-publishing your cautionary notices at 3-year to 5-year intervals; and/or (ii) re-filing the Declaration of Ownership with the Office of the Registration of Deeds at 3-year to 5-year intervals.
Aside from the TM Act, Myanmar's Industrial Designs Act was also passed last month. As with the TM Act, it has yet to come into effect and no implementing regulations are currently available. However, with these latest developments and the expected introduction of the Patents Act and the new Copyright Act, Myanmar's intellectual property regime looks to be on the cusp of a major overhaul and we expect to see significant changes to the legal landscape in the coming years.
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