In detail

(a) Registration of industrial designs

Under the Industrial Design Law 2019 and the Industrial Design Registration Rules 2023, the following persons are eligible to apply for an industrial design:

• The creator of the industrial design
• The creator's successor
• The employer of an employee who created the industrial design in the course of employment

The applicant may apply for protection of an industrial design by way of registration via MIPD's industrial design electronic filing system. To obtain protection under the Industrial Design Law, the industrial design must be new and original. Multiple designs may be protected under one application if all products constituting the industrial design fall under one class under the International Classification of the Locarno Agreement. The registration term of an industrial design is five years, renewable twice for a total of 15 years' protection.

The information required for the application includes:

• The applicant's details, namely:
  • If the applicant is a natural person: the full name, national security card number (or passport number for a foreigner) and address
  • If the applicant is a legal entity: the name, registration number, type of organization, country of incorporation, and address
• The name, citizenship and address of the creator of the design, if the applicant is not the creator
• If the applicant has appointed a representative, the full name, national security card number, and address of the representative
  • If the applicant is not incorporated in Myanmar, the form for appointment of representative must also be notarized by a notary public in the applicant's country of domicile.
• Product indication provided under the International Classification of Industrial Design
• Class and sub-class of the industrial design under the Locarno Agreement
• Description of the industrial design in no more than 100 words.

The representation of the industrial design must satisfy certain requirements, including the following:

• Presenting it as a drawing, photo or graphic either in black and white or color
• Presenting it in .JPG format, not exceeding 2 MB and 300 x 300 dpi
• Labelling figures representing the different dimensions (perspectives) of the industrial design as follows: 1.1, 1.2, 1.3, 1.4, etc.
• Presenting all parts of the industrial design in a clear, definite and distinguishable manner and with the quality fit for publication.

The official fees are as follows:

• Application for the registration of an industrial design: MMK 120,000 (around USD 60)
• Recordation of the registration: MMK 100,000 (around USD 50)

(b) Opposition

If an industrial design application passes examination by the MIPD, the industrial design will then be published for opposition for a period of 60 days. Any person may file an opposition against an industrial design application to the Registrar on the following grounds:

• The industrial design does not satisfy the requirements under the definition of an industrial design under the Industrial Design Law, i.e., the outer appearance of the whole or a part of any industrial or handicraft item or their parts resulting from the features of the lines, contours, colors, shapes, surfaces, textiles or products or such appearances or their decorations.
• The industrial design is not original.
• The industrial design is a technological or operation-related invention (i.e., the design is functional and not merely aesthetic).
• The industrial design is contrary to the public order or culture.
• The applicant is not entitled to apply for the registration given insufficient evidence.

If there is no opposition, or if the applicant successfully defends an opposition against the industrial design application, the Registrar will grant the certificate of registration of the industrial design.

(c) Appeal

An interested party dissatisfied with the Registrar's decision with respect to the matters relating to the registration of an industrial design may file an appeal to the IP Agency. This IP Agency was formed under the Industrial Design Law to, among other things, hear an appeal against the decision of the Registrar. Further, the interested party may file an appeal against the decision of the IP Agency to the Intellectual Property Rights Court established pursuant to the Industrial Design Law. 

(d) Intellectual Property court proceedings

The Supreme Court of the Union has conferred jurisdiction on certain courts, such as the Intellectual Property Court, to adjudicate industrial design matters. The Intellectual Property Court has both civil and criminal jurisdiction over industrial design matters and may try infringement cases and interim injunction applications.

Key takeaways

Given that IP owners can now file for protection of registered designs in Myanmar, it would be prudent for IP owners to review the scope of their current and future product offerings to ensure that they have sufficient industrial design applications to protect their rights and interests in Myanmar. Registration of designs can confer many benefits, including the ability to license the IP, deter unauthorized third-party use, and increase the value of your business.

To learn more about these issues and how they affect you, reach out to your usual Baker McKenzie contact.

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

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Japanese version