Myanmar – IP Law Developments

Background

Myanmar has no devoted law on trademarks. In Myanmar, registration of a trademark is possible through “Declaration of Ownership of Trademark” in the Office of the Registration of Deeds under the Ministry of Agriculture, Livestock and Irrigation and Assurances. The Inspector General of Registration supports this process under the section 18(f) of the Registration Act of 1909. To publicize the registration, a cautionary notice is published in local newspaper which describes the details of related trademark.

Process

In order to register a trademark in Myanmar, the below described process has to be followed:

  1. A prior mark search has to be conducted in to ensure the uniqueness of trademark. This confirms that the trademark has not been registered previously. Since there is no IP Office in Myanmar, this search has to be conducted on private basis from the cautionary notices published in the local newspaper or journals. as is the case with services offered through other firms. However, since the publication of a cautionary notice in newspaper is not compulsory this prior mark search cannot be enforced as an exhaustive search. In any case, the Registrar does not conduct a search of prior marks when examining a Declaration of Ownership filing.
  1. Registration of a trademark under the Office of the Registration of Deeds, requires the applicant to submit a signed declaration of ownership of the mark. This self attested declaration must include the detailed description of the related goods and services. The documents necessary for registration of trademark includes, power of attorney, original specimen of each trademark and declaration of ownership of trademark.
  1. Registration process of a trademark takes minimum three weeks once the application has been filed for obtaining a trademark. According to the Myanmar Stamp Act, every instrument to which the duty applies, when executed outside of Myanmar, must be duly stamped within three months of entering the country.

Further, Office of Registration of Deeds does not allow Foreign trademark owners to file a registration directly in the country. To do so, they must apply through a local licensed agent or a lawyer. The must submit the required documents in English, or certified English translations provided where other languages are used.

Lastly, in order to draw the attention of public towards the registered trademark, it’s a common practice to publish a cautionary notice regarding the same in the newspaper to declare that the mark has been registered and is in use by the owner or licensees. The cautionary notice must consist of information like the name of the trademark, its owner, the registration number and a warning stating that any fraudulent imitation or unauthorized use will be dealt with in accordance with the law.

Treaty Obligations

On May 2001, Myanmar became a member of the World Intellectual Property Organization (WIPO). On January 2006, Myanmar was due to bring new intellectual property laws being a member of the World Trade Organization (WTO) and in keeping with TRIPS Agreement. Further, on November 2005, Myanmar and other least developed countries were given an extension by the WTO Council for TRIPS until 1 July 2013, to provide protection for trademarks, copyright, patents, and other intellectual property under the WTO, but this has not eventuated.

Draft Trademark Law

In Myanmar no law has yet passed regarding the Draft Trademark Law although the application for it has been submitted in the parliament in 2013 only. Most probably the Draft Trademark law or it’s amended version will be passed soon.

This law is assumed to have securing the trademark for the duration of ten years from the first filed date and has to be renewed successively for the same duration thereafter. The law will follow ‘first-to-file’ system, which states that the ownership of trademark will be granted to the person who applies first for the registration. For prior mark search of a trademark, one must apply to the Intellectual Property Office, which the law will presumably establish, pay a registration fee and conduct the relevant search.

Currently, Myanmar is under the process of developing special Intellectual Property courts. The courts will deal with the disputes regarding the criminal and civil cases of infringements. Under the draft law a trademark owner may initiate litigation in a criminal and/or civil action for an alleged infringement. Trademark infringement will also be a criminal offence under the draft law, punishable by up to three years in prison.

In order to continue enjoying the rights entitled by a registered mark under the Draft Trademark law pertaining to Registration Act 1909, the application for the trademark has to be refiled by the owner under the new provisions once they come into force.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

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