MYANMAR

Trademark Application Opens 1st October 2020 in Myanmar for Existing Registered Owners and Users

The Ministry of Commerce has issued Order No. (63/2020) on 28th August 2020 pursuant to the Trademark Law of Myanmar that was passed on 31st January 2019. The Order stipulates the much anticipated “soft opening” of the new trademark law in which registered proprietors who have registered their trade marks with the Office of Registration of Deeds and trade mark owners who have used their trade marks in Myanmar (thus claiming rights as prior users) are eligible to apply for registration of their trade marks with the IP Registry from 1st October 2020 up to the date of official enforcement of the new trademark law.

We set out below the salient provisions of the Order:

• Applications for trademarks can be made to the IP Registry from 1st October 2020 until the official date of enforcement of the new trademark law
• Trademark owners who have either previously registered with the Office of Registration of Deeds or have used their trade marks in Myanmar are eligible to apply to register their trademarks during this “soft opening” period
• Filings may be done electronically through law firms and service agents
• The filing date of the applications shall be the official date of enforcement of the new trademark law provided that the applications comply with all formalities and the prescribed fees are paid within the time stipulated
• The prescribed fees and method of payment shall be notified by the IP Registry at a later date but before the official enforcement of the new law. Thus, no fees are payable for applications filed during this period
• Details of the new trade mark application must correspond to the details of the registration with the Office of Registration of Deeds or the trade marks as actually used (whichever is applicable). Thus, the trade mark and goods and services shall be identical to that previously registered or used
• No additional goods or services shall be allowed for applications filed during the soft opening period as priority is asserted based on the previous registration or use
• The Nice International Classification of Goods and Services shall be adopted for the classification of goods and services
• For applications filed based on the previous registration with the Office of Registration of Deeds, the following supporting documents should be submitted:
  • A certified copy of the registration certificate issued by the Office of The Registration of Deeds
  • A copy of the cautionary notice as published in the local newspaper
• For applications filed based on prior use, evidence of such use must be submitted and they include the following:
  • A copy of the cautionary notice as published in the local newspaper
  • Evidence of actual use in Myanmar
  • Evidence of marketing and promotional activities
  • Tax or Finance receipts
• If ownership of the trademarks has been assigned or there has been a change of name of the owner since the registration with the Office of the Registration of Deeds and such assignment or change has not been duly registered, the evidence of assignment or change of name of the trademark owner needs to be submitted together with the application

We will keep you apprised of key developments especially on the official fees, official enforcement date and any other requirement that may be imposed by the IP Registry from time to time.

Should you have any query, please do not hesitate to contact us at ZICOIP@zicolaw.com.