The Ministry of Commerce (“MOC”) issued Order 63/2020 dated 28 August 2020 announcing the commencement of the soft-opening period from 1 October 2020. The soft-opening period is intended to aid the transition from the current ‘first to use’ to the ‘first to file’ system for trademark registration in Myanmar.
Pursuant to our Client Alert dated 31 August 2020 ‘Myanmar: Trademark Registration Soft Opening – Online Filing from 1 October 2020’, further clarifications on the online re-registration process have been announced by the IP Department under the MOC. The clarifications are detailed below:
- One online application form has to be filed even for trademarks that are registererd under multiple classes. The online application will have an option to choose one/multiple classes depending on the requirements.
- During the soft opening phase, applicants will not have to file a Power of Attorney (“POA”). Only the particulars of the authorized representative must be filled in the online application. However, at a later stage (to be notified by the MOC), a POA will have to be filed. Each application will require an individual POA.
- The documentary evidence which is to be submitted along with the online application may be in English or Myanmar language. If the documents are in any language other than English or Myanmar language, a translation into either English or Myanmar language will be required.
- Law firms and service provider companies may apply to the MOC to open an account called a ‘WIPO File Account’ to conduct the online filing of the trademark. The announcement for such an application procedure and other details will be made through daily circulated newspapers. Idividual applicants will not be allowed to apply for such a WIPO File Account.
- The application for re-registration must include exact details of the trademark, including categories of goods and services as registered with the Office of the Registration of Deeds or those currently in use in Myanmar. If the details of the trademark or categories of goods and services are not consistent, the trademark will be deemed to be a new trademark. Such a new trademark may not be re-registered during the soft-opening phase. However, such marks may be registered in Myanmar after the official opening of the IP Office, subsequent to the soft opening phase.
- The government fees and methods of payment for trademark re-registration will be announced separately by the MOC soon.
The Order coupled with the clarification issued by the MOC is a welcome move. This represents a significant milestone in formalizing the online trademark registration process in Myanmar. With comprehensive market knowledge and longstanding expertise, DFDL stands fully equipped to assist you with the online re-registration process during this soft opening phase. We would be happy to discuss any of the above with you in further detail and offer our services to ensure a seamless transition from the ‘first to use’ to ‘first to file’ regime in Myanmar.
The information provided here is for information purposes only, and is not intended to constitute legal advice. Legal advice should be obtained from qualified legal counsel for all specific situations.
Partner, Deputy Managing Director & Head of Banking and Finance Practice, Myanmar
Junior Legal Adviser, Myanmar
Partner & Managing Director, Myanmar/Singapore