31 August 2020
On August 28, 2020, the Myanmar Government announced that the soft opening period of the Myanmar Department of Intellectual Property (MDIP) under Myanmar’s new trademark law will begin on October 1, 2020. This long-awaited development will be a very welcome one to trademark owners worldwide who have been waiting for the opportunity to properly protect their rights in Myanmar for many years.
As a result of this development, all existing holders of registered trademarks in Myanmar—i.e. those registered with the Office of Registration of Deeds (ORD)—will be required to re-file their marks under the new trademark law in order to retain their protection under the new system.
Re-Filing Marks
To re-register the rights to a trademark under the new system, the following will be required:
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Clear specimen of the proposed mark;
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Owner’s name and address;
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Classes and list of goods and/or services under the Nice Classification;
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Description of color claims of the mark; and
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Declaration(s) of ownership as recorded with the ORD.
If the applicant is not the same person who registered the mark at the ORD previously, additional evidence of assignment of the mark must be furnished. Where the name of the applicant has changed, relevant documents evidencing the change of name must also be submitted.
During phase one of the soft opening, applications may only be made using trademark registration agents (i.e. law firms and companies that offer trademark registration services in Myanmar, such as Tilleke & Gibbins).
Filing Unregistered Marks
During the soft opening period, it will also be possible to file an unregistered mark that is already in use in Myanmar, solely by the applicant, with appropriate evidence of use. The requirements for doing so are similar to the requirements for re-filing, but with substantial evidence of use in place of the documentary evidence of prior registration. Such evidence may include:
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Cautionary notices published in local newspapers;
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Evidence of use or promotion of goods or services bearing the mark in Myanmar;
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Tax receipts or expense vouchers; and
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Any other appropriate evidence.
As with re-filing, such applications can only be made via agents during phase one.
Filing Other New Marks
New trademark filings will not be available during the soft opening period. New filings under the new system will become available after the grand opening of the MDIP, the date of which has not yet been announced. As such, parties that have not yet filed new marks under the old system and cannot present substantial evidence of sole use in Myanmar, and therefore do not yet qualify to apply during the soft opening period, risk being unable to file for an unspecified period of time. To avoid this, it may be prudent for interested rights holders to apply for the recordation of these trademarks under the old system in early September, and then re-file them under the new system during the soft launch period.
Government Fees
All government fees and payment methods under the new law, including trademark application filing fees, shall be announced in separate notifications before the soft opening period begins. We will keep you updated on this information as soon as it is available.
Tilleke & Gibbins has written extensively on Myanmar’s new trademark law as the situation has developed, and you can find our full list of articles and publications on the topic here.
For further information, please contact
Sher Hann Chua, Tilleke & Gibbins
