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Trademark Registration and Enforcement in Myanmar

LawPlus Myanmar Ltd. Myanmar


  1.  Trademark Law 2019

 

The Trademark Law 2019 (“TML2019”) was passed by the Parliament of the Republic of Union of Myanmar on 30th January 2019. It came into force on and form 1st April 2023 under the Notification No. 82/2023, dated 10th March 2023, of the State Administration Council (“SAC”).  The MTL2019 consists of 24 chapters (106 sections).  It adopts the “first to file” principle of trademark protection. The Ministry of Commerce (“MOC”) and the Department of Intellectual Property (“DIP”) are the main government offices in charge of trademark registration.

 

  1. Marks Protected under the TML2019

 

The TML2019 protects marks, trademarks, service marks, collective marks, certification marks, trade names, well known marks and GIs (Geographical Indications). Trade names are protected without registration, provided that they are not used in contrary to the public order or to mislead the public or the trade.

 

  1. Re-Filing of Registered Trademarks and Used Marks

 

The trademarks already registered under the Deeds Registration Law 2018 before the effective date of the TML2019 (1st April 2023) were not automatically recognized and protected under the TML2019.  They must be re-filed, examined and registered under the TML2019. The DIP issued its Notification No. 63/2020 to set up the Soft Opening Period (“SOP”) of 1st October 2020 to 31st October 2023 for the owners of the registered trademarks to re-file them and pay the official re-filing fees.   Trademarks already used but not registered in Myanmar could also be filed during the SOP.

 

  1. Trademark Application, Priority Claim and Filing Requirements

 

The new trademarks which were not yet registered in Myanmar before 1st April 2023 can be filed under a single-class application or a multi-class application.

 

The priority filing date of the first foreign application for the trademark can be claimed if the first foreign application was filed within the period of six months prior to the Myanmar application filing date.

 

The filing requirements are the name, address, company registration number, telephone number and email address of the applicant; a notarized TM-2 Form (Power of Attorney) signed by the applicant to appoint a Myanmar representative if the applicant is not a Myanmar citizen; a specimen of the trademark in the ‘jpg’ format; a complete and clear description of the trademark; and a list of goods/services and their classes under the Nice Classification.  One notarized TM-2 Form can be used for filing and several trademarks by the same applicant.

 

  1. Examination of Trademark Application and Grounds of Refusal

 

The DIP carries out the formality check of the trademark application. If the DIP finds that any part of the application needs to be amended, the DIP will issue an office action notice for the applicant to respond within 30 days from the date of notice.

 

At the examination stage, the DIP may refuse registration of the filed trademark on one or several of these absolute grounds of refusal: lack of inherent distinctiveness; being directly descriptive of the goods and/or services for which it is applied; being a generic mark customarily or commonly used in the trade or the industry of the goods and/or services for which it is applied; misleading or causing confusion to the public or the trade or the industry; adversely affecting the public order, morality, religion or culture of Myanmar; directly imitating a flag or a symbolic feature of a state or an international organization without their authorization; and being or including any of the emblems specifically protected under international agreements of which Myanmar is a member.

 

The DIP may also refuse registration of the filed trademark on the relative grounds if the trademark is identical with or confusingly similar to a senior pending trademark or a registered mark or a well-known mark or a mark with priority right; filed in bad-faith because the filed trademark is owned by another person; affecting the personal right or name or reputation of another person or another legal entity without their permission; and infringing an intellectual property right of another person.

 

  1. Publication, Opposition and Registration

 

After the examination stage, if the filed trademark is not subject to any office action or refusal order, the IPD will publish it for 60 days for opposition.  If an opposition is filed, the DIP will send a notice of opposition to the applicant.  The applicant can file a counterstatement within a period indicated in the notice of the DIP.  If the DIP rules in favor of the applicant, the trademark will be allowed registration upon payment of the registration fee.

 

  1. Appeal

 

If the DIP refuses the application or rejects the opposition in case an opposition is filed, the applicant or the opponent can file an appeal with the Intellectual Property Agency (“IPA”) within 60 days from the date of receiving the decision of the DIP.

 

If the appeal of the applicant or the opponent is rejected by the IPA, the applicant or the opponent can file a further appeal with the Intellectual Property Court (“IPC”) within 90 days of receiving the IPA decision notice.

 

  1. Registration Validity Term and Renewal

 

A trademark registration is valid for 10 years from the application filing date and it can be renewed every period of 10 years within 6 months prior to its expiration date.  Renewal during the grace period of 6 months after the expiration date is possible.  A trademark registration not renewed during the renewal period or the grace period cannot be any further renewed.  It will be cancelled from the registration system by the DIP.

 

  1. Assignment and License

 

The owner of a registered trademark or a pending trademark can assign the trademark to any other person (an individual or a legal entity).  The owner of a registered trademark can license it to any other person. The terms and conditions of the license must meet the minimum requirements under the TML2019.  The trademark assignment agreement and the trademark license agreement must be made in writing, signed by the parties and recorded with the DIP.

 

  1.  Invalidation and Cancellation for Non-Use

 

A registered trademark can be invalidated on one or several of the absolute grounds or the relative grounds of refusal or for not being a mark as defined under Section 2 (j) of TML2019. 

 

A registered trademark which is not used in commerce in Myanmar without a good reason for 3 consecutive years is vulnerable to cancellation for non-use.

 

An invalidation action and a cancellation action for non-use can be filed by an interested party with the DIP or the IPC.

 

  1. Actions against Infringement

 

The owner of a registered trademark can file civil and criminal actions against an infringer of the registered trademark with the IPC.  The IPC may grant an interim injunction order and/or a permanent injunction order against the infringer and order the infringer to pay a compensation for the damage suffered by the owner.  The IPC may also order removal from the market or destruction of the infringing goods and other infringing articles.

 

LawPlus Myanmar Ltd.



About the Firm

LawPlus Myanmar Ltd.

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Contact PersonKowit Somwaiya, Prasantaya Bantadtan, Khin Khin Zaw
Emailkowit.somwaiya@lawplusltd.com; prasantaya.bantadtan@lawplusltd.com; khinkhinzaw@lawplusltd.com
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