.jpg)
5 October, 2017
Myanmar's new IP laws are under deliberation by the legislative committee of Myanmar's parliament and are expected to be promulgated by the end of 2017. Presently, IP protection in Myanmar is inadequate for foreign investors.
The Myanmar government is currently reforming its outdated intellectual property (IP) regime. The Ministry of Education, Science and Technology has prepared four draft IP bills (new IP laws)—the trademark law (TL), industrial design law (IDL), patent law (PL) and copyright law (CL)—in cooperation with the Union Attorney General’s Office and other government ministries.
The new IP law drafts were finalized by the previous Union Solidarity and Development Party (USDP) government in 2014 to encourage foreign investment. However, these IP laws are still in the bill stage and are not yet law. The new IP laws are presently under deliberation by the legislative committee of the Pyidaungsu Hluttaw (Myanmar’s parliament) and are expected to be promulgated by the end of 2017. The body of implementing regulations will take a further three to six months to pass following enactment.
Myanmar’s new IP laws are based on best international IP practices, IP laws of other ASEAN nations, the Agreement on Trade Related Aspects of Intellectual Property Rights and the Ministry of World Intellectual Property Organization recommendations.
Presently, IP protection in Myanmar is inadequate for foreign investors. There are no specific trademark or IP laws other than the Burma Copyright Act 1914, nor any specific provisions concerning the registration of trademarks. While there is a definition of “trademark” under §478 Penal Code 1861, this provides little guidance or protection. The lack of an IP regulatory framework has resulted in a customary protection practice developing, whereby the trademark owner makes a declaration of ownership and then registers this declaration with the relevant Office of Registration Deeds (ORD). In cases of infringement, foreign or domestic investors will present this declaration to the Myanmar authorities. Currently, foreign investors rely on this practice to enforce their IP rights.
Here is a summary of what you need to know about the new IP laws:
Trademark Law
The TL establishes the legal basis for the application, examination and registration of trademarks and is based on the first-to-file principle. Under the TL, the following marks can be protected: (i) smell and touch signs; (ii) visual marks; and (iii) perceivable sound.
Registration as a group/collection of marks will be allowed. Domestic and foreign brand owners can also apply for registration. However, foreign applicants will have to appoint an authorized agent, and this agent must reside in Myanmar.
This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office (MIPO) on their behalf. The MIPO will be established to oversee operations under the new IP laws. Specialized IP courts will also be created to deal with enforcement and infringement.
The TL will allow the trademark applications to claim priority over foreign applications/registrations. The registration process includes:
- Filing of an application (application must be filed in English or Myanmar language and have a declaration of intention to use)
- Substantive examination and other formalities
- Publication for opposition
- Issuance of a certificate
The duration of protection of registered trademarks will be 10 years from the effective filing date. Each renewal will extend the validity by another 10 years.
The TL contains civil and criminal liabilities for infringements in Myanmar. Such liabilities for a criminal offence may be punishable by a maximum of up to three years of imprisonment or fines or both.
Industrial Design Law
Current Myanmar law does not deal specifically with “industrial design.” Owners only have limited protection by filing a declaration of ownership with the ORD, followed by publication of a cautionary notice in a newspaper to advise the public of design ownership.
An “industrial design” is defined under the IDL as an appearance, in whole or in part, of any industrial or handicraft product
and features representable by lines, contours, colors, shapes, textures and/or materials of the product itself and/or its ornamentation.
An industrial design will receive protection under the IDL if it meets these two requirements:
Novelty or new
An industrial design is considered new if it has not been disclosed to the public in Myanmar or overseas. An industrial design will lack novelty if it is identical or substantially the same as an existing design. The IDL also indicates that an industrial design will not be considered as new if it merely combines features of other designs.
Design is not excluded from protection. The IDL provides for certain exclusions, including:
Industrial designs that are merely differentiated by technical or functional aspect
Industrial designs that are contrary to public order, moral, faith or the cherished culture of Myanmar
Applications for registration can be submitted in English or Burmese. Applications from a Paris Convention country or member state of the World Trade Organization will be accepted for registration, provided that the application is filed within six months of the first-filed application overseas. Publication of the application will be performed in accordance with the Myanmar industrial design regulations.
Any third party may file an opposition with the registrar within 30 days of the publication date of the industrial design application. The applicant of the industrial design application will be provided with an opportunity to file a counter statement to the opposition, and a hearing may be held before the registrar. Decisions made by the registrar are appealable to the director general within 60 days of the publication of the decision.
An industrial design, once registered, will have an initial term of five years from the filing date of the application. This initial term may be extended twice by five years for a total maximum term of 15 years. The owner of the registered industrial design will have the exclusive right in Myanmar to make, use, sell, offer for sale and/or import any product having the registered industrial design. The owner will also have the right to transfer or license the registered industrial design, but such transactions must be registered in writing with the MIPO.
An owner of the registered industrial design may pursue civil and/or criminal action for industrial design infringement. Injunctions are also available upon application to the relevant court. Additionally, the owner has a right to transfer or license the registered industrial design and must record such transactions with the MIPO.
Patent Law
To register any patent, the patent application must be filed with the registrar. The PL allows Myanmar patent applications to claim priority to a first-filed patent application of a Paris Convention country so long as the Myanmar patent application is filed within 12 months of the first-filed patent application.
Once a patent is granted, the patentee will have the exclusive right in Myanmar to make, use, sell, offer for sale and/or import the invention contained in the patent. The patentee will also have the right to prevent others from making, using, selling, offering for sale and/or importing the invention contained in the patent, as well as the right to assign the patent to others.
A patentee may pursue civil action and/or criminal action for patent infringement.
Copyright Law
Under the CL, “copyright” is defined as the exclusive rights of the author of a literary and artistic work. The CL also introduces exclusive rights of performers, producers of phonograms, as well as broadcasting organizations. Original works are also protected by copyright.
The CL provides protection of the original works of a person who is a citizen of Myanmar, or has a habitual residence in Myanmar, or has habitual residence in a member country. “Member country” means a country that is a member of a convention, treaty or agreement relating to copyright to which Myanmar is also a member; or any country which is a member of any international or regional organization related to such convention, treaty or agreement. Such provisions are a reflection of Myanmar's obligations under the ASEAN Framework Agreement on Intellectual Property Cooperation.
Registration of copyright is not mandatory. If an author or owner wishes to register their copyright, they may file an application at the MIPO. If the registrar grants the registration, it will issue a certificate of copyright registration to the applicant. In general, a term of protection of a work created by an author is the lifetime of the author plus 50 years.
A copyright owner has the exclusive right to reproduce, translate, adapt, arrange, transform, modify and/or distribute the original copyrighted work. A copyright owner also has the right to transfer, assign or license said rights to others. If a registered copyrighted work is transferred, assigned or licensed to others, the applicable agreement must be registered at the MIPO.
There are also exceptions to a breach of copyright, these include:
- Use of a copyrighted work without authorization of the copyright owner will not be deemed copyright infringement if done for the sole purpose of private study, research, critical review or summary in news media
- Reproduction of copyrighted work in an appropriate quantity that specifies the name of the author and source in the form of a reference or credit will not be deemed copyright infringement
- Access to copyrighted work in a library for education purposes
- Copying of a computer program without authorization will be permitted for the purposes of retaining an original copy as purchased, and/or the backing up of data to prevent loss or damage, providing this is for a consumer’s own use
Under the CL, a copyright owner may pursue administrative action, civil action and/or criminal action for copyright infringement.
Outlook
Generally, the impact of the new IP laws on businesses will be positive. The new IP laws will create a simple, uncomplicated and cost-effective system of IP registration. This will be beneficial to all foreign and domestic businesses who wish to protect their IP, as it can be done cheaply and quickly by most small- to large-scale businesses. For the first time, the whole trademark application process will be clear.
In the long term, the new IP laws will work to protect both domestic and foreign brands. IP law reform will also send a clear message to international investors that Myanmar is serious about IP protection. The new IP laws are a promising step that will encourage further growth in Myanmar’s retail trading, technology and manufacturing sectors.
For further information, please contact:
Krishna Ramachandra, Partner, Duane Morris & Selvam
kramachandra@duanemorrisselvam.com
See our full Doing Business In Myanmar Report via this link. https://www.investingmyanmar.com
