Two Month Update On Myanmar’s Trademark Re-Filing Requirement.

2 December 2020

 

Following many years of anticipation, and almost two years after the enactment of the Trademark Law 2019, on October 1, 2020, Myanmar’s new Intellectual Property Department (IPD) commenced its soft opening period and opened the online application system for two categories of trademarks:

1. trademarks registered under the previous recordation system; and
    

2. trademarks used in Myanmar, but not registered under the previous recordation system.  
    

This soft opening period is expected to run for six months, although no deadline was officially stipulated, so extensions (or contractions) of that period are possible. All applications that are filed during the soft-opening period will be accorded the same filing date, which will tentatively be the date of the eventual grand opening of the IPD. 

 

Any owner of a mark falling within those categories is encouraged to file or re-file their marks under the new system during this soft opening period to ensure the protection of their marks under the country’s new IP regime. Applications can only be made via authorized agents, approved by the IPD, with a physical presence in Myanmar. 

 

The IPD has used the first two months of filings to identify and resolve issues that may exist within the online portal, and has been working closely with local law firms (including Tilleke & Gibbins) to do so. As such, we are pleased to note that the system is now running with improved efficiency. Trademark application numbers for submitted applications are still pending, and will be issued by the IPD at a later date.

 

Those who have not yet filed their marks under the new system, but are eligible to do so during the soft opening, are strongly encouraged to do so. The details for doing so under each category are provided below. 

 

1.  Trademarks registered under the old system. The following information and documents will be required: 
 

• Applicant’s full name and address;
   

• Applicant’s company registration number;
   

• Class(es) and list(s) of goods and/or services under the Nice Classification;
   

• Clear specimen of the mark;
   

• Certified translation and transliteration of any non-English/Myanmar language elements of the mark, if applicable;
   

• Description of color claims of the mark, if applicable; and
   

• Declaration(s) of ownership as recorded with the Office of Registration of Deeds.
   

2.  Trademarks in use in Myanmar, but not registered under the old system. To register applications in this category, you will need to provide the following: 
 

• Applicant’s full name and address;
   

• Applicant’s company registration number;
   

• Class(es) and list(s) of goods and/or services under the Nice Classification;
   

• Clear specimen of the mark;
   

• Certified translation and transliteration of any non-English/Myanmar language elements of the mark, if applicable;
   

• Description of color claims of the mark, if applicable; and
   

• Supporting documents evidencing:
   

  • Use of the mark in Myanmar; and/or
     

  • Promotion of the goods/services bearing the mark in Myanmar, such as tax receipts and expense vouchers, evidencing the above.  
     

The IPD is still finalizing its decision pertaining to two matters below: 
 

• The use and execution requirements of an Appointment of Representative form (Form TM2); and
   

• The official government fees.  
   

Pending the finalization of these outstanding matters, applicants are strongly encouraged to provide their local agents such as Tilleke & Gibbins with notarized powers of attorney to attend to the trademark filings during this soft opening period.
 

For a more detailed overview of the new system, you may wish to refer to our previous alert here.