On 15 February 2018, the Upper House of the Myanmar Parliament passed the long awaited Trademark Bill, Patent Bill, Industrial Design Bill and Copyright Bill in an effort to set up a new regime of protection of intellectual property rights in Myanmar. As the next steps, the Laws will be submitted to the Lower House of the Myanmar Parliament and the Assembly of the Union of Myanmar for approval, and will be signed by the President before coming into effect upon publication in the Myanmar Official Gazette this year, probably in July 2018.
Notably, the Trademark Bill has introduced the first-to-file framework as an effort to align with the international standards. According to the Trademark Bill, the trade mark registration process in Myanmar would involve five steps, namely, filing of an application, formality examination, substantive examination, publication for opposition, and granting registration. Once registered, the mark shall be protected for a ten year period from the date of application, and this term can be renewed perpetually every 10 years for further 10-year periods.
Unfortunately trademarks which have been recorded at the Office of the Sub-Registrar of Deeds and Assurance under the current first-to-use system will not be automatically protected under the new first-to-file system. It is therefore very important that registrants of the current recorded trade marks in Myanmar re-apply for their marks as soon as possible when the new Trademark Bill comes into effect in order to be protected under the new trade mark regime.
The latest Trademark Bill is silent on whether there is a transition period during which such registered marks would remain valid for the registrants to prepare to re-apply for their marks, or whether there is any special examination procedure applicable to such re-applied marks. The latest option under discussion is that there might be a transition period for the registrants of current recorded marks to re-apply for their marks, and the re-applied marks will not be subject to substantive examination, but only to formality examination. Those marks would then proceed to be registration if no oppositions are raised. However, this option is still under consideration by the Myanmar government.
The big take away for trade mark owners worldwide is to review their portfolio in Myanmar so that they will be ready to re-file their marks and file other new marks once the new Trademark Bill comes into effect. We will monitor and report on developments here and are available for advice and guidance.
Authored by Eugene Low, Nga Nguyen, My Doan and Serena Lim