IMPORTANT NOTICE: CHANGES AND IMPACT OF MYANMAR IP LAW ON TRADEMARKS
1. The new IP law in Myanmar (“Myanmar IP Law”) has not been available up to date. It is still being discussed at Pyithu Hluttaw. The law would be come into effect after the President’s signature and publish in the Gazette.
2. Along with the upcoming adoption of new trademark legislation in Myanmar, all marks currently recorded would need to be re-filed and examined once the Myanmar IP Law enters into force in order to gain protection in Myanmar.
3. Under new trademark legislation in Myanmar, Myanmar will move “first-to-use” system to “first-to-file” system. In a broader sense, the person who files the earliest trademark applications will enjoy the rights to register the marks.
4. It is not clear under the existing draft of Myanmar IP Law whether a certain period of grace will be allowed within which existing trademark owners will be allowed to file the corresponding trademark applications in line with the foregoing “first-to-file” policy. In such context, it is best that brand owners should immediately file applications for registration of their important trademarks once Myanmar IP Law come into force in Myanmar.
5. Under the current registration practice, identical or similar trademarks may be registered concurrently by more than one party because there is no trademark law, no official trademark search facility or database in Myanmar, no examination process for similar trademarks and no opposition or cancellation processes against trademark applications prior to their registration in Myanmar. As a result, all the registered Trademarks under the current system must be re-registered and examined under the IP Office in new law system.
6. According to the earliest draft trademark bill, proprietors are likely to receive the benefit of a grace period of 03 years after the implementation of the new law to file a new application and are also likely to receive priority under the new system. However, the latest draft trademark bill removes the transitional period for the registered and published marks under old system.The draft law also states that all existing marks would have to be re-examined for registration once the new law has come into force.
In light of the foregoing, it is not guarantee or certain that the transitional period or a grace period for registered/published marks under old system may be given to prioritize the proprietors on records. Such issue shall be addressed by the Parliament before enactment of Myanmar IP Law. KENFOX advise that all trademarks due for renewal in Myanmar should still be renewed to avoid any possible risks that the non-renewed trademarks are deemed as completely new trademarks for examination and not in the list of priority for re-protection after Myanmar IP Law comes into force.
Please contact us if you require any assistance for IP related matters in Myanmar.