Rights holders warned to prepare for new Myanmar trademark regime

On 30 January 2019 Myanmar President Win Myint signed the country’s long-awaited trademark legislation. According to local practitioners, the changes offer “vast improvements” for brand owners, although current rights holders are warned that they must evaluate their portfolios as new applications will need filing.

The Myanmar Trademark and Geographical Indication Law was passed by the Lower House on 12 December 2018, before being forwarded to Myint for approval. The most significant change is the introduction of a first-to-file trademark registration system, which will replace the current first-to-use system of recordals. This will see trademarks valid for a period of 10 years from the filing date, with renewals available every 10 years. Trademarks registered in member states of the Paris Convention can gain a six-month priority – an interesting addition since Myanmar itself is not a signatory of the Paris Convention.

There is also a pledge to protect well-known marks and open up multi-class applications. Further, there will be substantive examinations of applications and all of these operations will be conducted by a newly established IP office, called the Central Committee for Intellectual Property Rights and the Intellectual Property Rights Agency.

On the enforcement side, there are “significant improvements”, according to a bulletin from law firm Rouse, as the new law will mean that both trademark infringement and counterfeiting will constitute criminal acts, with penalties ranging from three years’ imprisonment to a fine of $3,250. The law also gives the Myanmar judiciary powers to create a dedicated IP court.

For rights holders, action may be required. According to local firm Biz Law Consult Myanmar, international brand owners must look to protect their marks in the country or face losing them. “It is critical for registrants of current recorded trademarks in Myanmar to re-apply for their marks at the earliest possible date when the new trademark regulation comes into effect in order to be protected under the new trademark regime,” one representative explained.

Expanding on the action that trademark owners should consider, experts at Tilleke & Gibbins have suggested that rights holders audit their portfolios to ensure that their rights in Myanmar are recorded and up to date, and “to ensure maximum leverage under the new system”.

A transition period of around three to six months is expected to be enacted in order to allow rights holders to re-apply for trademarks or geographical indications.

In addition to re-applying for marks, the firm also suggests that any licensing agreements in the jurisdiction are carefully checked to ensure that franchisees and licensees have contacts which are up to date and accurate, and to “avoid any ambiguities”.

The development marks a milestone in Myanmar, which also passed its first Industrial Design Law on 30 January 2019.