1. Publication of marks
The MIPD issued Journal TM/2024/01 on 1 May 2024, publishing the marks that were filed before the grand opening of the new electronic filing system on 26 April 2023, subject to completion of office actions in the examination stage (i.e., the distinctiveness of the mark, specifications, examiner requirements and formalities of the application). The publication of the marks is for opposition purposes. The information included in the Journal on published marks includes the representation of the mark, classes of goods and services, the applicant's information, color claims, and disclaimers, if any. Based on our discussions with MIPD, marks will be published on a monthly basis, but the frequency may change in the future.
2. Opposition
Any person may file an opposition against a published trade mark application to the MIPD within 60 days from the date of publication of the mark (1 May 2024 for the first Journal), in the prescribed form subject to the payment of the official fee (about USD 75). An opposition action may rely on absolute grounds such as non-distinctiveness or descriptiveness; and relative grounds such as being identical or similar to an earlier mark (including a well-known mark) or filing in bad faith.
This 60-day opposition deadline is non-extendible as there are no provisions in the Trademark Law for an extension of time, and we have confirmed this through our engagements with the MIPD. After this deadline has elapsed, the avenues for recourse will instead be through an invalidation or cancellation action against a trade mark registration.
There has yet to be any Myanmar guidance or case law with respect to the assessment of similarity under the Trademark Law 2019. We will provide an update on the assessment of similarity once available.
If a party to an opposition action is dissatisfied with the MIPD's decision, they may appeal to the IP Agency, which has been formed to hear appeals against the MIPD's decisions (among other purposes). The party may further appeal against the IP Agency's decision to the IP Court.
If no opposition is filed or the mark owner successfully defends the opposition, after 60 days, the marks will be allowed to proceed to registration.
Key takeaways
Trade marks will be granted registration after 60 days from the publication date. It is important to monitor the Myanmar Trade Mark Journal, to ensure that you are aware of any marks that are potentially similar to your brands. You can then decide whether to take any action, such as to proceed with filing an opposition action.
We are able to assist with monitoring publications, advising on the chances of success of an opposition, preparing and filing an opposition action, or defending against opposition actions. Please reach out if you have any questions, and we would be delighted to assist.
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
