On 28th August 2020, The Ministry of Commerce of Myanmar has issued Notification No. 63/2020 for the order for the filing of applications to register in accordance with Myanmar’s new Trademark Law.
Under the new Law, Myanmar will be transition from a first-to-use to a first-to-file system for trademark registrations.
The new trademark law will undergo two phases. The soft opening period begins on 1st October 2020, lasting a period of just under 6 months with an end date of 31st March 2021. During this transitional period no new trademarks will be allowed for registration.
Existing trademark owners, defined by the Ministry of Commerce of Myanmar as:
‘owner of a mark registered at the Deeds and Documents Registration Office (or) an owner of a mark which is not registered but is actually used in the markets of the Union,’
may re-file or re-register the rights to their trademark during the soft opening period. Existing trademark owners may not use this as an opportunity to add classes of goods or services to their existing trademark.
Existing trademark owners may contract companies or law firms offering Trademark Registration services to file their trademarks for the first step of registration. For the second step of registration, trademark owners may make an application electronically via the Consumer Affairs department by themselves or through the means of a third party.
The requirements for re-registration of a trademark are:
- Clear specimen of the proposed mark in JPG format (<1MB)
- Owner’s name and address
- Classes & list of goods or services as recorded in Deeds and Documents Registration Office described in detail according to Nice Classification
- Description of colour claims of the mark
- Mark translation or transliteration (if required)
- True copy of declaration of ownership as recorded in Deeds and Documents Registration Office (if required)
- Additional evidence of assignment of mark, such as documents evidencing change of name must be submitted (if required)
Both trademark owners with registered and unregistered but in-use marks must submit use evidence of his or her trademark in Myanmar. They must fulfil further requirements as detailed as below:
- Published trademark cautionary notice
- Actual use of evidences on the market in the Union
- Proof of advertisement in a marketing or sales promotion context
- Tax receipt or other receipt for expenses
- Any other appropriate evidence
The appropriate government fees and payment methods under the New Trademark Law will be made known before the beginning of the Grand Opening period. Should trademark owners re-file their registered trademarks prior to the announcement of the government fees, applicants will be required to settle the designated fees at a later date.
TM2 Forms (Appointment of Representative) are yet to be issued and thus can be submitted at a later date. Applicants will be notified with regards to the late filing time frame.
Applicants who file their trademarks during this period, under the condition that all requirements are met and paid fees, the date on which the application is officially accepted will be considered as the filing date.
Starting from the Grand Opening of the Myanmar Intellectual Property Office dated 1st April 2021, applicants who are not existing trademark owners may begin to file applications to register their trademarks under the New Trademark Law.
The New Trademark Law in Myanmar will see a harmonisation of the trademark system in the country with international law and World Intellectual Property Office. For example, public trademark searches will be made available and trademark owners will be able to enjoy a term of registration of ten years, with term of renewal set at ten years also.
We are proud of our 28 years of professional experience in Intellectual Property and we are ready to defend your IP rights in Malaysia and internationally: anything, anytime, anywhere. Get in touch to find out how you can file a trademark in Myanmar today.
This article is written for informational purposes only. Updated on 30th September 2020.