Myanmar: MIPD issues office actions for Trade Mark Applications

26 Mar 2024    2 minute read

In brief

The Myanmar Intellectual Property Department (MIPD) has started issuing office actions to applicants to comply with requirements for trade mark applications. The deadline for responding to an office action is 30 days from date of receipt of the office action (extendible for 30 days up to four times), after which the trade mark will be treated as withdrawn. This is a positive development showing the progress being made under Myanmar's IP regime.

Contents

1. Office action

The MIPD has started issuing office actions to applicants for the trade mark applications on which they have conducted formality examinations (e.g., particulars of the applicants and supporting documents) and substantive examinations (e.g., distinctiveness and specification). Office actions may require applicants to, among other things:

  • Amend the specification for compliance with MIPD's acceptable lists
  • Include a sufficiently clear colour claim, for a mark in colour
  • Include a disclaimer for a non-distinct or descriptive feature of a mark

2. Time frame

The requirements of the office action must be fulfilled within 30 days of receipt of the office action, failing which the trade mark application will be considered withdrawn. An extension of time to provide the requirements may be obtained up to four times, with an extension of 30 days each time, provided that there are valid grounds for an extension. The official fees of an extension request are MMK 50,000 (about USD 25).

Presently, what constitutes a "valid ground" for an extension is not accounted for in the Trademark Rules and we are obtaining clarity on this from MIPD. We therefore currently recommend that applicants file responses to office actions as quickly as possible.

3. Publication

Fulfilling the requirements of office actions will bring marks closer to passing examination by the MIPD. The MIPD is anticipated to begin publication of marks that have passed examination within the following months. Marks will be published for 60 days for opposition purposes. If there is no opposition or the mark owner defends it successfully, the mark will be granted registration and protection under the Trademark Law 2019. 

We will continue to monitor these developments closely. Should you have questions or concerns, please contact any member of our team.

See our previous alerts here and here for an explanation of the new Myanmar trade mark law and its transition into effect.

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Contact Information
Andy Leck
Principal
Singapore/Yangon
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andy.leck@bakermckenzie.com

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