The Ministry of Commerce of Myanmar issued Order 63/2020 on 28 August 2020 announcing that the new Myanmar Office of Intellectual Property (“OIP”) is ready to start operations on 1 October 2020 through a “Soft Opening” period, which is anticipated to last for at least 6 months until the “Grand Opening”. The OIP will implement the new Myanmar Trade Marks Law enacted in January 2019, which has provisions for formality examination, substantive examination, publication, registration, opposition, etc., and is closer to international trade mark practices.
Soft Opening (starting 1 October 2020)
During this period, the OIP will only accept trade mark applications from applicants wishing to regularise their existing rights, i.e. applicants who previously recorded a Declaration of Ownership of a Trade Mark with the Office of Registration of Deeds (“ORD”) or applicants who have not previously recorded such declaration but have nevertheless been genuinely using the trade mark in Myanmar (or possibly overseas – see table below).
Besides the usual filing information on the mark, applicant and goods and services, the documents required to file a trade mark application are:
*The Order mentions that the applications will be filed via electronic means, therefore it is unclear if the requirement of original documentation would be waived, or that these should be submitted separately as supporting documents after the applications have been filed electronically.
Please note that:
- the trade mark applied for should be the same mark as indicated in the Declaration of Ownership of Trade Mark or as used; and
- the goods and services applied for should be in accordance with the Nice Classification and should not exceed the scope of whatever was indicated in the Declaration of Ownership of Trade Mark or as used (at this point, it is unclear whether multi-class applications will be available).
Grand Opening (anticipated to be after 1 April 2021, subject to further announcements)
At the end of the “Soft Opening” period, the OIP will start accepting trade mark applications from all other interested parties.
Under the new trade mark application procedure, trade mark searches would be available, the opposition period is 2 months from the date of publication, oppositions would be available at the IP Court, the term of registration will be 10 years from the date of application, and renewal requests can be filed 6 months prior to the expiry of the registration.
Whilst the ORD will continue to accept recordals of a Declaration of Ownership of a Trade Mark until the Grand Opening, after the Grand Opening, trade mark applications will be granted on a first-to-file basis, and existing rights obtained through recordation with the ORD and publication of cautionary notices will no longer suffice to demonstrate ownership of a trade mark in Myanmar.
Presently, the new law is still silent on the applicable official fees at each stage of the proceedings and this is anticipated to be announced just prior to the Grand Opening.
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.