A modern trade mark system in Myanmar could be only months
away with the draft trade mark law now under review by the
Myanmar has been working on its first formal trademark law
for many years, as part of a broader process to overhaul the
country's legal framework to facilitate and encourage
businesses to invest and expand in Myanmar. Although there have
been many delays in the past, it is expected the law will come
into effect in late 2017 or at the latest by early 2018.
The biggest change from what was proposed in earlier
versions of the law is the lack of a re-registration process
from the current system to the new system, along with a strict
first-to-file system. Brand owners should therefore be prepared
to file all of their important trade marks on the first day the
law comes into effect.
The proposed system
Types of marks
The law includes the following in the definition of the
types of marks: trade marks, service marks, certification marks
and collective marks. Registration of geographical indications
will also be possible and famous marks that meet certain
criteria will also exist under the law.
Right to apply
Both domestic and foreign mark owners have the right to
apply for registration; however foreign applicants will be
required to appoint an agent domiciled in Myanmar to act on
their behalf. Priority can also be claimed to foreign
The registration process includes application filing (in
either Burmese or English), formalities and substantive
examination, publication for opposition and certificate
Trade mark registrations will be valid for 10 years from
filing date, and each renewal will extend the validity by 10
years. There will also be a provision for lodging non-use
cancellation actions against registrations which are not in use
for any period of three consecutive years.
New official bodies
To operate and oversee the Law, the Myanmar Intellectual
Property Office will be created and specialised IP courts will
be established to handle trade mark litigations.
Trade mark infringement in Myanmar will constitute a
criminal offence punishable by up to three years of
imprisonment or fines or both.
Trade mark owners will also be able to enforce their rights
through Customs. With sufficient reasons for suspecting import,
export or transit of infringing goods into, out of or via
Myanmar, mark owners will be able to apply to Customs for a
suspension or detention order.
Injunctions can also be ordered from the IP courts, which
will act on presentation of appropriate evidence demonstrating
infringing activity. We expect other elements typically
required for injunctions (such as likelihood of success on the
merits) will be present as well.
Earlier versions of the law provided for a transitional
period (three years in some drafts) where all trade mark owners
whose rights had been registered under the current system would
have been given the opportunity to re-register under the new
system; and marks that were transitioned would have remained
valid and received the earlier registration priority date.
The transitional process has been removed from the current
While the draft law appears to be a strict first-to-file
system, the law indicates the following marks are not
- marks that possibly infringe the
intellectual rights of any other individual;
- marks that were applied for in bad faith;
- marks that are identical or similar to
When the new Trade Mark Office conducts its analysis of
trade mark applications, the above provisions may be considered
to include registrations under the current system and use now
taking place in Myanmar. If so, trade marks registered and/or
used under the current system may block trade mark applications
under the Law. This is particularly true for famous marks.
Nonetheless, it is uncertain how the law and the processes for
the law at the new Trade Mark Office will be implemented and
thus the best practice for brand owners is to ensure all
important marks are filed on the first day the new law takes
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