A number of seminars have been held in and around Myanmar where representative officials presented and discussed Myanmar's plans for implementation of its new Trademark Law. Subsequently, several conflicting updates have issued from various sources and this is Spruson & Ferguson's verified summary of the official plans.
The Myanmar representatives are running further training on 19 December 2019 and we will update you on any clarifications that result from that training.
The Myanmar authorities are still currently deciding on important issues such as official fee rates and Power of Attorney certification requirements. Also, the number of officials engaged to run the new IP Office are still insufficient. While both the international community and Myanmar government would like to see the Trademark Law implemented as soon as possible, the official authorities have set Day 1 for 1 January 2020. We see any earlier commencement date as impracticable and unlikely.
While the text of the Trademark Law does not provide for a transitional period before its full implementation, the Myanmar authorities are planning a "soft opening" lasting six months from Day 1. During this time, the Trademark Office will only accept applications to re-register marks that have previously been registered at the Office of the Registrar of Deeds.
During the soft opening period, the Myanmar Ministry of Commerce will issue a Notification for collecting all trademarks registered via a Declaration of Ownership (the current estimate is that there are roughly 200,000 of these). New applications under the Trademark Law will be permitted only for marks for which a duly stamped Declaration of Ownership exists. We have also been informed that all applications filed any time during the soft opening period will bear the same Filing Date of Day 1. If a trade mark is registered under the Trademark Law, its Registration Date will be the application filing date. This means that for marks re-filed any time during the soft opening period, the Registration Date will be the date of Day 1 (most likely 1 January 2020).
Examination of Transitional Period Applications
Applications filed during the soft opening will be examined according to the Trademark Law, and the Myanmar authorities estimate the examination time at 12 months. Applications will be examined on absolute and relative grounds for both distinctiveness and prior conflicting marks.
Under the Trademark Law, similarity examination involves comparing a mark being examined against prior marks that have been filed or registered under the same Law – a straightforward application of the first-to-file principle. However, as all applications filed during the soft opening will bear the same Filing Date, the issue of priority will be determined by examining which trade mark owner has the better right to its mark.
If two marks filed during the soft opening are found to be similar, the Registrar will give priority to the mark that has been in continuous use for a longer period of time. While an earlier duly stamped Declaration of Ownership will function as a prima facie evidence of earlier use, other forms of use evidence can also be submitted.
The Myanmar authorities envisage that most filings under the Trademark Law will be done through an online filing platform, which is yet to be completed. All trade mark agents in Myanmar will be eligible to register on the platform and undertake filings therefrom, including submission of application forms and prior use evidence.
As indicated above, the relevant official fee rates have not yet been decided. However, during a seminar in Bangkok on 1 November 2019, a Myanmar official mentioned plans that the filing fees will be comparable to the Thai Trademark Office's rates (i.e. roughly USD 300 per class).
In order to take advantage of the soft opening period, we recommend that if the duly stamped Declaration of Ownership for a mark to be refiled is not available for any reason, the mark owner should consider registering it via a Declaration of Ownership as soon as possible by the end of 2019. Otherwise, filing for that particular mark will only be possible six months after Day 1. Given the increasingly complex nature and emerging concerns regarding implementation of the Trademark Law, it is better to adopt a cautious approach by refiling a Declaration of Ownership.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.