3 September 2020
The commencement of Soft Opening was meant to take place earlier this year. Further delays were caused by the establishment of the Department of Intellectual Property and the COVID-19 pandemic, which hampered efforts to organise wider scale staff training sessions due to the restriction in the groups in public places.
Notwithstanding this, implementation efforts have been underway and the Ministry of Commerce has recently announced that the new Soft Opening commencement date will take place on 1 October 2020. This will mark the beginning of Myanmar's shift to a registration system that is aligned with international trade mark registration systems and practices.
As a recap, we set out the key features of the new trade mark system once Soft Opening is in place:
-
Duration of Soft Opening: It is expected that Soft Opening will run for a period of around 5 to 6 months although this has not been confirmed. Thereafter, Grand Opening will commence once Soft Opening ends. The exact "end-date" of the current registration system has not been announced yet.
-
Types of marks accepted during Soft Opening: During Soft Opening, the following categories of marks may be re-filed under the new filing system:
S/N
Categories of marks that may be re-filed
Documents/ Requirements for re-filing
(based on our understanding to-date)(a)
Trade marks registered at the Registry of Deeds under the current system
• [For Category (a) only] Scanned copy of stamped Declaration of Ownership and/or renewal with the Registry of Deeds
• Clear specimen of the proposed mark*;
• Owner's name and address*;
• Classes and list of goods and services*;
• Claim of priority and supporting documents;
• Colour claim (if any); and
• [For Category (b) only] Although this has not been expressly mentioned, applicants may wish to ensure that they have the supporting evidence of actual use in Myanmar ready in the event that the Registry calls for proof of the actual use.*Category (a) applicants must ensure that the re-filed mark must mirror the details of the existing registration as recorded in the Declaration of Ownership, save for the scope of the goods/services to be claimed, which may be narrower than what is listed in the Declaration of Ownership.
(b)
Trade marks that have not been registered at the Registry of Deeds but have been put to actual use in Myanmar
-
When to re-file your applications: It is our understanding that applicants may re-file their trade marks anytime during the Soft Opening; that is to say, it does not matter whether applicants re-file on the first or last day of the Soft Opening period. These applications will only undergo substantive examination during the Grand Opening period. That said, it is recommended to re-file earlier or as soon as possible once Soft Opening commences to buffer time to address any deficiencies or objections that may be issued.
-
Filing date of re-filed applications: All applications filed during the Soft Opening period (regardless of the actual date filed during this period) will bear the date of commencement of Grand Opening as the filing date. Applications filed after the Soft Opening will bear the actual date of filing.
-
Examination of applications: Applications filed during the Soft Opening period will undergo formalities and absolute grounds' examination during the Grand Opening period and if deemed in order, will be published for opposition purposes. There will not be substantive examination of the applications, but third parties may oppose registration of these filed applications during the opposition period.
-
Grounds of Opposition: Third parties will likely rely on the existence of an earlier right (e.g. similar mark) to oppose registrations of an application filed during the Soft Opening period. It will be up to applicants to be able to show that they have an earlier right in order to succeed in defending the opposition to registration. This will likely be established through showing proof of actual earlier use of the goods/services claimed under the filed mark in Myanmar when assessed against the third party challenger.
-
Evidence of use in Myanmar: It is therefore important to compile and gather evidence of use of your mark in Myanmar in order to establish priority over possible third party challengers. Guidelines relating to "use" have not been issued but these should not stray too far from traditional forms of evidence of use such as invoices, sales vouchers, agreements, import licences, shipping and clearance documents, receipts, catalogues, brochures and pamphlets, photographs showing the use of the mark on goods/labels/shopfronts, FDA certificates, promotional activities such as advertisements, marketing peripherals and so forth. It would also be helpful if the evidence of use bears the date of first use or a date to support such use. Cautionary Notices may be accepted as evidence of use or at least, evidence of intent to use. However, it remains to be seen how much weight the Registry will give to Cautionary Notice-type evidence in the event of a conflict between 2 or more similar marks. If supporting evidence of actual use is submitted, we believe this would trump the Cautionary Notice-type evidence. In the absence of any evidence of use by either party, a Cautionary Notice may possibly lend some support towards a priority right.
-
Fees, Rules and Regulations not available yet: At the time of the preparation of this report, we understand that further grounds of opposition, the Rules and Regulations, associated official fees and the Power of Attorney to be signed by applicants have not been released yet and are only expected to be announced at a later date, but before Grand Opening. Local counsel is awaiting the announcement of official fees before releasing their corresponding professional charges.
-
Record amendments to particulars of marks: It is also recommended to record amendments (such as name/address change, assignment of marks) under the current system before the Soft Opening bearing in mind that details of the re-filed mark must mirror that of the registered mark under the current system; otherwise, the mark can only be filed as a new application during the Grand Opening.
If you have an existing registration under the current system and wish to re-file this once Soft Opening commences, please let us know urgently so that we can assist to convey your instructions to local counsel to ensure that the applications are filed as soon as possible during the Soft Opening Phase.
If you do not have an existing registration but have been using your mark in Myanmar, you may wish to ensure that evidence of use of your mark in Myanmar is collated and compiled in the event that you are required to show such use to qualify for filing under this category.
If you have neither an existing registration and/or have used your mark in Myanmar but wish to be accorded the right to re-file once Soft Opening commences, please let us know urgently so that we can check with local counsel whether there is sufficient time to file and obtain the stamped Declaration of Ownership for new applications under the current system, in order to qualify for re-filing under the new system.
Based on our earlier discussions with local counsel, it appears that only registered marks (and not pending applications) under the current system will qualify for re-filing under the new system.
Please feel free to contact us if you have any questions regarding filing or re-filing in Myanmar.
For further information, please contact:
Lorraine Tay, Partner, ATMD Bird & Bird
lorraine.tay@twobirds.com
