Background

The "soft opening period" of the new trademark registration system began on 1 October 2020 and was announced by the Ministry of Commerce (MOC) in Order No. 63/2020 ("2020 Order"). The 2020 Order did not provide for the duration of the soft opening period, but many had expected it to last for only six months and to be followed by the "grand opening" of the new trademark registration system.

During this soft opening period, trademarks that have been registered via declarations of ownership filed with the Office of the Registration of Deeds and/or trademarks that have enjoyed use in Myanmar (for instance, evidenced by the publication of a cautionary notice) (collectively, "Registered/Used Marks") may be filed through the electronic trademark registration system prior to the trademark law coming into effect. Trademarks that have been filed during the soft opening period will enjoy a priority "common filing date".

All other trademarks that do not fall within the ambit of Registered/Used Marks ("New Marks") may only be filed after the trademark law comes into force and upon the grand opening of the new electronic trademark registration system.

Prior to the 9 March Seminar, there was a dearth of information on, among other things, when the new Trademark Law 2019 will come into force; when the soft opening period will end; the trademark rules (which are currently in the draft stage); the official fees; and the trademark forms.

Key takeaways

The key takeaways from the 9 March Seminar are set out below.

1. New trademark law — The new trademark law will come into force on 1 April 2023, in accordance with Notification No.82/2023 by the Republic of the Union of Myanmar State Administration Council.

At the 9 March Seminar, the MIPD announced that 1 April 2023 (i.e., when the new trademark law comes into force) is not the same date as the date of the "grand opening" of the new trademark registration system.

2. Grand opening of the new trademark registration system — The date of the grand opening of the new trademark registration system has yet to be announced.

Nevertheless, the MIPD expects the grand opening of the new trademark registration system to take place shortly after the collection of the official fees, which is expected to be sometime in May or June 2023.

An official announcement regarding the "grand opening" will be released within the next 1-2 months.

3. Soft opening of the new trademark registration system — The soft opening period will last until the date of the grand launch of the new trademark registration system. Applications made during the soft opening period must be supported by a declaration of ownership and/or evidence of use prior to 1 April 2023.

This is because Section 93 of the Trademark Law 2019 provides the following:

Before this law comes into effect, in accordance with the Registration Act:

1. An owner of a mark registered at the Deeds and Documents Registration Office or an owner of a mark which is not registered but is actually used must submit a registration application, in accordance with this Law, in order to enjoy the rights relating to registered marks.
2. Whether a mark has been registered or not registered, a mark that is actually used in the markets of the Union shall enjoy the right of priority for the goods or services for which said mark is used for the duration of the stipulated period

[our emphasis added]

Hence, the soft opening period will only accommodate the following:

1. Declarations of ownership that were registered with the Office of the Registration of Deeds prior to 1 April 2023
2. Trademarks that have enjoyed use in Myanmar (for instance, evidenced by the publication of a cautionary notice) prior to 1 April 2023

4. Official fees — Payment of the official fees for trademarks filed during the soft opening period will begin from 3 April 2023.

The amount of the official fees has not been confirmed. Nevertheless, during the 9 March Seminar, the MIPD mentioned that the official fees will be charged on a per class basis, which are anticipated to be as follows:

1. MMK 150,000 per class for the application stage (approximately USD 75)
2. MMK 150,000 per class for the registration stage (approximately USD 75)

So, for a straightforward registration in one class, the trademark owner should budget around USD 150 for the official fee.

5. Trademark rules — The trademark rules are still in the draft stage and have yet to be finalised.

During the 9 March Seminar, the MIPD announced that the trademark rules will be finalised by the end of March 2023, i.e., prior to the trademark law coming into force.

6. TM Forms — On 1 July 2022, the MOC issued Notification No. 44/2022, in which the applicable TM Forms for trademark applications under the new Trademark Law 2019 were specified on the MIPD's official website.

At the 9 March Seminar, the MIPD confirmed that the TM Forms uploaded to the MIPD's official website are the finalised versions and that Form TM-2 (Appointment of Representative) has to be notarised if the applicant is not a local Myanmar entity or individual, and/or it is executed outside of Myanmar.

While it was not made clear at the 9 March Seminar, we believe it is likely that a duly executed Form TM-2 will have to be submitted for each new trademark application. This is supported by the fact that the current Form TM-2, uploaded on the MIPD's website, requires a representation of the application mark to be reflected. 

For more information on (and copies) of the TM Forms, please refer to our client alert issued on 30 August 2022.

At the 9 March Seminar, many Representatives offered feedback that it is very impractical and costly for foreign brand owners to submit separate notarised Form TM-2s for each respective trademark application.

The MIPD is therefore considering whether to allow a single notarised Form TM-2 with an annexure of the list of trademark applications filed during the soft opening period, to be submitted instead of having separate notarised Form TM-2s for each application mark.

As soon as there are further announcements by the MIPD in respect of Form TM-2, we will keep you updated.

Recommendations

The soft opening period is still ongoing, but the Office of the Registration of Deeds may take 1-2 months to endorse or register new declarations of ownership.

In this regard, for owners of new trademarks who wish to take advantage of the "common filing date", we suggest publishing a cautionary notice for the new trademarks as soon as possible, i.e., before 31 March 2023, given that the soft opening period will only accommodate the following:

1. Declarations of ownership that were registered with the Office of the Registration of Deeds prior to 1 April 2023
2. Trademarks that have enjoyed use in Myanmar (for instance, evidenced by the publication of a cautionary notice), prior to 1 April 2023

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