Can rights holders record trademark and brand-related IP information with customs and, if so, how?
Rights holders can record their registered marks with the Myanmar Customs Department to protect their intellectual property rights from cross-border trade in counterfeit goods bearing their registered marks under the Trademark Law, which came into force on April 1, 2023. Furthermore, regardless of whether they have filed a customs recordation, registered mark owners can request a suspension order to prevent the release of goods into free circulation if they have evidence giving reason to suspect that counterfeit goods are being—or will be—imported into the country, in accordance with Section 68 of the Trademark Law’s.
According to Ministry of Planning and Finance (MOPF) Notification No. 50/2023, once a trademark is registered under the Trademark Law in Myanmar, the registered mark owner is entitled to apply for a customs recordation with the Customs Department directly or via a legal representative at no cost. Unless the mark is registered with the Intellectual Property Department (IPD) under the Trademark Law, a customs recordation or suspension order cannot be applied.
A customs recordation is valid for two years from the date of the application’s acceptance. The recordation can be renewed every two years, 30 days before the expiration date. After the customs recordation is made, any information amended or withdrawn for the registered mark at the IPD must also be provided to the Customs Department within three working days, together with any necessary documentation reflecting the amendments or withdrawal.
Customs recordation is not available for industrial designs. The Industrial Design Law and Industrial Design Rules do not provide the requirements and process for a customs recordation or suspension order in relation to industrial designs. Section 68 of the Industrial Design Law indicates that, upon a rights holder’s request, the Court of Intellectual Property Rights can order provisional measures as it sees fit to prevent the infringement of the rights to the registered industrial design and to prevent the entry of the infringing goods into the domestic market. This includes imported goods after the payment of leviable duties to the Customs Department and customs clearance. In addition, the Industrial Design Law allows the Court of Intellectual Property Rights to issue a final decision on destroying the infringing goods or preventing such goods from entering the Myanmar market.
Are copyright registrations also registrable with Customs?
Under Myanmar’s new Copyright Law (enacted in 2019 and brought into effect on October 31, 2023 under State Administration Council Notification No. 218/2023), rights holders can apply at the Customs Department for a suspension order of the release of goods suspected of infringing copyright or related rights into free circulation if there are reasonable grounds for suspecting that the goods infringe copyright or related rights. The Copyright Rules under the Ministry of Commerce’s Notification No. 70/2023 setting up the procedures for copyright-related matters silents about the customs recordation or suspension order process. Subsequent rules and regulations laying out the requirements and procedures for an application of customs recordation and suspension order are being prepared.
While Myanmar has yet to ratify the Berne Convention, works by non-citizens or non-residents are protected under Myanmar’s Copyright Law 2019 if they are created and either first published in Myanmar or published in Myanmar within 30 days of the first publication in another country. The protection of copyrights automatically arises without a need for registration with the IPD.
Can brand owners send customs officials a product information guide or any additional materials to assist them in identifying genuine products?
MOPF Notification No. 50/2023 indicates that rights holders can provide the Customs Department with product information. This can include the:
- product name;
- details about the mark’s registration (e.g., registration date, number, and term);
- supporting materials or tools; and
- a detailed description for how to recognize the goods.
Documents can be attached to assist the Customs Department in identifying the genuine products; however, the notification does not indicate the specific type of documents for identification. No precedent is yet available to clarify the specific documents or other materials to send to the Customs Department for product identification as all marks filed under the Trademark Law are still pending registration, which means they cannot yet be the subject of an application for a customs recordation or suspension order.
What is the typical process for confiscation or further investigation in the event that customs officials identify potentially counterfeit goods?
If the Customs Department discovers potentially counterfeit goods or goods bearing a counterfeit mark, it will notify the relevant rights holder and importer that they may examine the suspected goods at the same time under the Customs Department’s supervision. The rights holder can apply to the Court of Intellectual Property Rights to take provisional measures for its damages. The importer is allowed to apply to the Court of Intellectual Property Rights if unsatisfied with the suspension order. The Customs Department is empowered to administer the suspected goods in accordance with the decision of the Director General of the Customs Department or the order of the Court of Intellectual Property Rights.
Upon a decision of the Court of Intellectual Property Rights confirming that the goods are counterfeit or bear a counterfeit mark, the Customs Department must take action accordingly, with the importer responsible for paying the costs of storing, destroying, and removing the goods. If the Court of Intellectual Property Rights decides that the goods are not counterfeit or do not bear a counterfeit mark, the rights holder must pay court-ordered compensation to the importer for the wrongful suspension and detention of the goods. The Customs Department can exchange information about allegedly infringing goods with other countries through the World Customs Organization.
How will brand owners typically be contacted when suspicious or counterfeit goods are identified?
Under the Trademark Law, regardless of whether an application for a suspension order has been filed with the Customs Department, the Customs Department must suspend the release of goods into free circulation whenever they find goods bearing a counterfeit mark. Without leaking confidential information, the Customs Department will notify the relevant rights holder and importer about the suspension order.
The rights holder must take legal action or inform the Customs Department about the actions of the Court of Intellectual Property Rights on provisional measures during the period specified under the Trademark Law and Trademark Rules, failing which the Customs Department will release the goods.
Are there any time-sensitive considerations that brand owners should be aware of when dealing with customs-related IP enforcement?
Upon the Customs Department’s acceptance of an application for a suspension order, the applicant must pay a security as directed within five working days from the date of notification of acceptance of the application, or else the application will be rejected. After the Customs Department issues a notification regarding its suspension order upon finding counterfeit goods, rights holders must take legal action (e.g., apply for a provisional measure at the Court of Intellectual Property Rights) within 15 days (or three days for perishable goods) from the date of the notification. If appropriate, the Customs Department may grant an extension of another 15 days before the expiration of the first 15 days.
What are the potential costs involved in working with customs officials to protect a brand’s intellectual property?
A customs recordation for a registered mark can be filed at no cost. However, the rights holder must pay a security (the amount has yet to be specified) to the Customs Department for an application for a suspension order to protect its intellectual property rights against cross-border trade. (No precedent is yet available.)
Can you provide examples of successful collaborations between international companies and customs authorities that have resulted in tangible results?
No precedents or examples under the Trademark Law are currently available. The Trademark Law came into effect on April 1, 2023, and the IPD commenced full operations on April 26, 2023. Therefore, registrations of all filed marks filed under the Trademark Law are still pending as of October 2023. Customs recordation or suspension orders for marks can be made only after the marks are successfully registered under the Trademark Law.
What proactive strategies can brand owners employ to enhance their partnership with customs officials?
Myanmar has implemented its new first-to-file system for statutory protection of trademarks following the enforcement of the Trademark Law. Registration under the Trademark Law is mandatory for mark owners to claim their exclusive rights over a mark. Brand owners should apply to register their marks under the country’s Trademark Law to secure their intellectual property rights, then make a customs recordation with the Customs Department upon successful registration of the mark to enjoy protection with regard to cross-border trade.
For further information, please contact:
Yuwadee Thean-Ngarm, Partner, Tilleke & Gibbins
yuwadee.t@tilleke.com
