Category Archives: MYANMAR

The Budding Patent Law in Myanmar

Myanmar, also known as Burma, a least developed country in mainland South-East Asia, is still in its embryonic phase of Intellectual Property Laws. The country is not presently a signatory to the Paris Convention for the Protection of Industrial Property or any other treaty protecting patents. The Burma Patents and Designs (Emergency Provisions) Act 1946 came into force in 1993 in the country, but has been repealed, and therefore currently Myanmar does not have any standard through which Patents can be applied and enforced. This brings about a scenario where goods that are patented, and for which companies or individuals hold relevant patent rights outside Myanmar, can be produced and used for commercial purposes and traded in Myanmar without the permission of the actual rights owner. There is no regulation or any law for protection of inventions and related IP. As a result, it is currently not possible to apply for patents in Myanmar.

Current setting for Patent Protection: Though, there is a gap between the redundant Patent Law and enforcement of new law, Patent protection has found its way through section 18(f) of the Registration Act under which Declaration of Ownership with the Myanmar Registry Office of Deeds and Assurances can be filed by the Patent owners. This declaration is a solemn statement of facts made by the Patent owner. After the declaration is registered, it is advisable to publish a Cautionary Notice in a daily English Language newspaper informing the public about the ownership of the patent which warns the potential infringers of legal action by patent owners. There is no substantive examination of the patent filed by way of such Declaration. The Declaration is valid for three months period with possibility of renewal. Nonetheless, this Declaration doesn’t grant any patent rights and currently, in absence of a proper legislation, there is actually no option to enforce patents in Myanmar.The Specific Relief Act (Section 54(b) and (c), and Illustration (u)) allows for patent infringement lawsuit, but it is ambiguous as to how such lawsuit may be conducted and decided upon in absence of patent law and the required legal standard. Thus, this law provides limited patent protection. Moreover, priority claim registration is not available under the Registration Act.

  Furthermore, Technology Transfer Agreements are enforceable if they are registered with the Myanmar Scientific and Technology Research Department but it doesn’t cover patent licensing. As there is no specific law for protection of patents in Myanmar, most entrepreneurs as an alternate way of protecting their inventions, spend extensive amounts in protecting their trademarks through the available means. By doing so, they protect the brand reputation and goodwill of their products as a minimum that they can achieve.

TRIPS and MyanmarMyanmar has acceded to Trade Related Aspects of Intellectual Property Rights (TRIPS), and therefore it is required that the country complies and implements the laws in consonance with the Agreement by no later than 1st July 2021. Consequently, Myanmar is drafting IP laws particularly Patent Laws to ensure its legislation is in line with the TRIPS. Thus, the status of IP Law seems to be improving as the country has drafted a new legislation for regulation of Patent which is supposed to be in compliance with TRIPS Agreement.

The Draft Law for Patents: The Draft law has been framed and published in 2015 and it is endowed with the procedural and substantive provisions found in patent laws of most Paris Convention countries. The Attorney General’s Office and Ministry of Science and Technology were instrumental in drafting the said law that is expected to be promulgated by the end of 2017 or in early 2018. According to the Draft Patent Law, to be patentable, the invention must be novel involving an inventive step and should also have an industrial applicability. These requirements are the basic three requirements as per the international standards of patent protection globally.

 According to the draft bill, Patent applications can be filed with the Myanmar Intellectual Property Office (IPO) and the registration system has been kept similar to the other ASEAN countries. IPO shall be responsible for all IP registrations in the country. After the receipt of the application for the patent filed, preliminary examination will be conducted by the IPO following publication of the patent application only after making sure that it does not defy the integrity, national security, and public safety. If it is found that the patent application is contrary to national security and public safety, the rights will get transferred to the Myanmar Government. After the publication, a three months period will be provided for any opposition which can be raised from the date of publishing of the patent application, it will be subsequently followed by substantive examination and finally grant or reject the application. The life of protection of Patents will be twenty years, subject to annual fees.

The draft bill has also provided for the grant of compulsory licenses wherein, the Myanmar Government will have the right to issue compulsory licenses for specific vital pharmaceuticals and the owner of the rights can’t deny such grant of license subject to royalties. The interest of the patent owners has been protected by the law and specific remedies have been provided in case of infringement of the patents which include civil litigation and criminal prosecution. Also, the patent owners can apply to appropriate courts for grant of preliminary injunctions.

At present, it is extremely difficult to enforce patent protection in Myanmar in absence of proper Patent law and legal standards. Innovations and intellectual inventions can’t be protected in Myanmar, so it is highly worthwhile to think before bringing such innovations into place in Myanmar. However, it is a sigh of relief for the inventors and investors, that the country has acceded to TRIPS, the law for patent protection has been drafted and is set to arrive anytime soon.

References:

[1] http://www.youripinsider.eu/patent-protection-myanmar/

[2] http://www.myanmarpatent.com/patent.htm

Author: Ms. Pratistha Sinha, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at anirudh@khuranaandkhurana.com.

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MYANMAR: NEW TRADEMARK LAW EXPECTED TO BE ENACTED IN 2017

For the past few years, the nation of Myanmar has been proactively working on the implementation of its first ever formal trademark law, keeping in mind that the new law will overhaul the nation’s legal framework to encourage and motivate the industries and businesses to come and invest and grow in the country [1].

The implementation of this new Trademark law has been projected for this year. Hopefully once this new trademark law becomes effective, the practices which are currently followed by the practitioners i.e. the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which is followed by the cautionary notices published in the newspaper, will then be replaced by the new modern Trademark system which will stick to International standards set by WIPO.

The new Trademark law will prove to be greatly beneficial to the brand owners and businesses as the new law will bring proper clarification to the whole trademark application process. Since the Myanmar market is on an economic rise, the new trademark law, once implemented, will be a welcome move for the businesses and their brands, thereby encouraging further growth and prosperity of their brands in Myanmar.

The New Trademark System

The new Trademark Law will be based on the first-to-file principle. The new law will have the following features:

  1. The new Trademark law will include following marks which can be protected [2]:
  • Smell and touch signs,
  • Visual marks, and
  • Perceivable sound.

The above mentioned marks are categorized further into service, trade, collective marks, and certification. Registration as a group/collection of marks will also be allowed.

  1. The new law will allow both domestic and global/foreign brand owners to apply for registration of trademarks in Myanmar. Having said that, the global/foreign applicants will have to appoint an authorized agent and this agent must be domiciled in Myanmar [2]. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office on their behalf.

The new Trademark law will allow the trademark applications to claim priority from foreign applications/registrations.

  1. The registration process under the new trademark law will include [2]:
  • Filing of an application (where, the application must be either filed in either English or Burmese and must have a Declaration of Intention to Use)
  • Substantive examination and other formalities
  • Publication for opposition and
  • Issuance of certificate.
  1. The validity duration of the registered trademarks will be 10 years from the effective filing date and after each renewal will extend the validity by 10 years [2].
  2. The new Trademark law will also have a provision for submitting a request for a non-use cancellation against those registered trademark which are not in use for a period of 3 consecutive years [2].
  3. The new Myanmar Intellectual Property (IP) office will be created [1] to look after the operations in the new Trademark law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.
  4. Enforcement:

The new Trademark law will have both civil as well as criminal liabilities for potential infringements in Myanmar.Such liabilities as far as Trademark infringement in Myanmar is concerned will have a criminal offence punishable by maximum up to 3 years of imprisonment or fines or both [3].

Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark mark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

  1. Transition from the current to new trademark law

All those owners who have their trademarks registered under the current trademark law will be required to, within the period of three years, re-register under the new law [4].

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

References

[1] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_4.pdf

[2] http://dbav.org.vn/trademark-protection-in-myanmar-and-the-new-draft-trade-mark-law/

[3] www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf

[4] Griffiths, AJ Park -Amanda. “New Trade Mark Laws for Myanmar Coming in 2017.”Lexology.Lexology, n.d.