7 September 2020
Ministry of Commerce announces that registration applications may be filed by owners of existing marks from 1 October 2020, in order to enjoy registered mark rights under the new Trademark Law.
On 28 August 2020, the Ministry of Commerce ("MOC") issued Order 63/2020 regarding registration applications to be made by owners of existing marks, in order to enjoy the rights relating to registered marks under the Trademark Law 2019 ("Law"). The Order provides long awaited confirmation of the commencement date – 1 October 2020 – from when owners of marks may file the necessary registration applications envisaged in section 93(a) of the Law, in order to preserve their priority rights and enjoy the protections afforded under the new Law in respect of their existing marks. It remains unclear when the Law will come into effect (as the necessary Presidential Notification has yet to be issued). The Order represents a key step towards implementing the new Law, which together with the introduction of an electronic trademark register, offers significantly strengthened mark-related protections for local and foreign businesses operating in the country.
From 1 October 2020, owners of marks who have already registered their marks at the Office of Deeds Registration ("ORD") as well as owners of unregistered marks who sufficiently asserted their rights in such marks through actual use in Myanmar, are eligible to submit registration applications to register their marks, in order to preserve their rights of priority and enjoy the rights relating to registered marks under the Law in respect of their existing marks. The Order stipulates the necessary evidence to be submitted in support of the application in order to prove prior registration or actual market use of unregistered marks, including where rights have been assigned. We will be happy to discuss these specifics further with you, to ensure your application is ready to be submitted as soon as the system opens for filings on 1 October.
The Order confirms that initially, applications can be submitted electronically by law firms and other providers of mark registration services via the electronic filing method designated by the Department of Consumer Affairs. At some later date it will also be possible for owners of marks to file their applications directly via the electronic filing method, as an alternative option.
The Order makes it clear that the registration process is only a means to preserve currently held rights in existing marks – to the extent to which such rights in the existing marks were previously registered or (in the case of unregistered marks) otherwise held through actual use in the market in Myanmar by the owners. This registration process does not allow owners to seek to extend the scope of coverage of their existing marks, or to register marks beyond those already registered at the ORD or otherwise held through actual use. The new electronic registration system adopts the international Nice Classification system of classification of goods and services for purposes of registration of marks.
Details of the registration fees, payment mechanisms and other procedures are expected to be announced in the coming weeks. It is unclear how long the transitional registration period for existing holders of marks will last, so we recommend that owners prepare to submit their registration applications promptly when the system opens on 1 October.
For further information, please contact:
Tom Platts, Partner, Stephenson Harwood
tom.platts@shlegal.com
