On 11 March 2020, the World Health Organization (“WHO”) declared the outbreak of the novel coronavirus (“COVID-19”) as a pandemic. The spread of the virus accelerated rapidly on a daily basis causing massive disruption to political, social, economic and financial structures across the entire world. The pandemic has spread across Myanmar resulting in compulsory quarantine measures being put in place and the imposition of travels bans. In light of this, enforcement of the new Trademark Law is likely to be delayed and interrupted.
The Ministry of Commerce (“MOC”) initially presented and introduced the forthcoming online trademark registration system through a seminar held in December 2019.
Currently, implementation of the online trademark registration system has been delayed pending the development of a better and more streamlined platform for applicants wishing to register/re-register their trademark(s). Since Myanmar is a member state of the World Intellectual Property Organization (“WIPO”), the MOC has confirmed that the online system will utilize the “WIPO File” system and it will be supervised by IPAS (Intellectual Property Administration System) provided by the WIPO. The MOC is now preparing to launch the Intellectual Property Website. Through this website, the MOC intends to share developments relating to trademark registration such as how to proceed with trademark re-registration, prescribed trademark forms and the total costs to register a given mark. These costs will depend on the level of official fees as well as the number of trademarks to be registered and so on. In the meantime, we have gathered the following information from verbal communication with the Intellectual Property Department of the Ministry of Commerce (the “IP Department”).
Once the Trademark Law enters into force, for a period of six months (the “Soft Opening Period” as verbally stated by the IP Department) the re-registration of any previously registered trademark will take priority over any new/later application. This appears to be a form of grandfathering concept as long as the previously registered trademark is re-registered during the Soft Opening Period.
Applications for the re-registration of existing trademarks will be accepted during the Soft Opening Period. For the application process (“Application Process”) the IP Department requires the following information/documents to be submitted:
Declaration of Ownership registered with the Office of Registration Deeds (“ORD”) (an original or scanned copy may be provided);
Date of first use and evidence of the mark in Myanmar (in the event that no Declaration of Ownership was registered with the ORD);
Details of the proprietor (name, address, country/jurisdiction of incorporation); and
Specification of goods and services.
After the Soft Opening Period (the IP Department verbally refers to this as the “Grand Opening”), trademark registrations will proceed as per the Application Process indicated above and on the basis of the standard ‘first-to-file’ concept.
Any pre-existing trademark that is not re-registered during the Soft Opening Period will cease to have any legal authority.
The procedures set out under the new Law are yet to be implemented and it will require some time to develop an efficient, user-friendly and fully functional online trademark registration system. The owner of the trademark which has previously been registered under the old system would enjoy a ‘right of priority’. We assume that such a right would be valid and enforceable for a period of up to six months from the time that the re-registration window opens. To obtain the ‘right of priority’, trademark holders should gather and maintain tangible evidence related to usage of their existing trademarks. This includes trademark cautionary notices, logo announcements, invoices, catalogs, office stationery and other kinds of evidence attesting to the trademark’s common usage in Myanmar. In the meantime, to avail of this ‘right of priority’, it is advisable to file a declaration of ownership of trademark with the Office of Registration of Deeds (“ORD”) as per the recording system in current use.
Given that the new trademark registration regime is based on international standards, the interests of the trademark owners would be better served and protected under this new system. The new regime provides a dynamic registration mechanism which will entice companies to have their trademark registered and further incentivize them to pursue their business activities in Myanmar. In light of the present situation, enforcement of the Trademark Law and the new registration system have yet to be implemented though it is hoped that this will take place before the end of 2020.
In the meantime, DFDL stands ready and waiting to offer our services in regard to registering declarations of ownership at the ORD which would facilitate the “right of priority”. This will become available from commencement of the re-registration period which will be notified in advance by the MOC.
 The full client alert can be read here: https://www.dfdl.com/resources/legal-and-tax-updates/myanmar-legal-update-upcoming-online-trademark-registration-portal-corporate-secretarial-services-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.
Authors & Contacts
Partner & Managing Director, DFDL Myanmar/Singapore
Legal Adviser, DFDL Myanmar