One of the most significant developments in the spectrum of intellectual property rights in Myanmar is the enactment of the Trademark Law (“TL”). The TL though enacted on 30 January 2019 has not yet entered into force pending the issuance of a Notification by the President of Myanmar.
Newsletters related to the TL that were circulated across the public domain generated a certain level of confusion and apprehension among trademark owners and readers due to concerns over the “First-to-File” approach.
Upon closer inspection, the TL does introduce a “First-to-File” system (for fresh trademark applicants) through which trademark owners that submit their applications first can prevent identical or similar marks being filed for identical/similar goods and services. Nonetheless, the TL does provide an exception to this called the “right of priority”.
The trademarks which were already recorded with or registered at the Office of Registration of Deeds (“ORD”) under the previous regime would be afforded with the “right of priority” wherein they would be given a priority to register within the prescribed period (which we assume would be six months from the passing of the law).
Additionally, it must be noted that Myanmar is a member of the World Trade Organization (“WTO”) and the principles of National Treatment accorded therein would need to be obeyed. Therefore, giving effect to international treaties such as the Trade Related Aspects of Intellectual Property Rights (“TRIPS”) (Article 3) as well as the Paris Convention for Protection of Industrial Property (“Paris Convention”) (Article 6), the TL has also introduced a “right of priority” for marks which are already registered with signatories of Paris Convention and members of WTO.
These marks which are already registered would therefore not be subject to the “First-to-File” system.
Once the TL enters into force and the regulatory body is formed with set procedures, the entire application process should become clearer. As things currently stand, we are satisfied that the Paris Convention signatories have been given the overriding “right of priority”. Initial fears over what was viewed to be a draconian law due to misleading online material appear to have been unfounded.
Partner, Managing Director
Deputy Managing Director,
Head of Banking & Finance Practice
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.