Background
The "soft opening period," which began on 1 October 2020, was announced by the Ministry of Commerce in Order No. 63/2020.
The soft opening period was restricted only to 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 publication of a cautionary notice) (collectively, "Registered/Used Marks"), whereas all other trademarks ("New Marks") may only be filed after the grand opening.
Key takeaways
In conjunction with the 5 April Announcement and our unofficial discussions with the MIPD, the key takeaways are as follows:
- Implementation of the new Trademark Law in Myanmar
The implementation of the new trademark registration system entails the following phases:
Phase I (1 October 2020 to 31 March 2023): During Phase I of the soft opening period, only Registered/Used Marks are eligible for filing. All trademark applications filed during this period will be given a "common filing date," which is likely to be the first day of the grand opening (to be confirmed).
Given that the Trademark Rules were still in the draft stage during Phase I, applicants were unable to submit the TM-2 Form (Appointment of Representative) or make payment of the official fee for Phase I applications.
Phase II (1 April 2023 to 25 April 2023): We are presently in Phase II. During Phase II of the "soft opening period," the new trademark registration system will still accommodate Registered/Used Marks secured prior to 1 April 2023.
All trademark applications filed during this period will also be given a "common filing date," which is likely to be the first day of the grand opening (to be confirmed).
It is mandatory to submit the notarized TM-2 Form (Appointment of Representative) and the official fee payment at the time of filing the Phase II application under the new electronic system.
Phase III (from 26 April 2023): The grand opening of the new trademark registration system will take place during Phase III.
All applications for New Marks will bear the filing dates of the applications, i.e., the date on which the MIPD receives the complete application (including the notarized TM-2 Form and stipulated official fee).
- "Common filing date"
Phase I and Phase II applications will be given a "common filing date." Based on our unofficial discussions with the MIPD, the "common filing date" has yet to be determined.
It is, however, likely that the "common filing date" will be the first day of the grand opening of the new trademark registration system, i.e., 26 April 2023.
- Submission of TM-2 Form (Appointment of Representative) and payment of official fees
For Phase I applications, applicants may proceed to submit the notarized TM-2 Forms and make payment of the outstanding official fees between now and 31 May 2023.
For Phase II applications, the notarized TM-2 Form and official fee payment must be submitted on the date of filing between 1 April 2023 and 25 April 2023. Therefore, the last day for lodging any Phase II application is 25 April 2023.
If the TM-2 Form and official fee payment are not submitted during the stipulated timelines above, the relevant Phase I or Phase II applications will not be given the "common filing date."
In cases of late submission (after 31 May 2023) of the notarized TM-2 Form and official fee payment, the relevant Phase I applications will instead bear the filing dates on which the MIPD receives the complete application (i.e., the notarized TM-2 Form and stipulated official fee) instead.
- New Marks
Applications for New Marks will be accepted from the grand opening date of 26 April 2023.
Significance
In respect to Phase I applications, trademark practitioners and rights owners were previously of the impression that the notarized TM-2 Form (Appointment of Representative) and official fee payment must be submitted by 25 April 2023, i.e., a day before the date of the grand opening of the trademark registration system.
The 5 April Announcement was thus well received by trademark practitioners and rights owners, given that there is now significantly more time (up till 31 May 2023) to submit the notarized TM-2 Form and official fee payment for Phase I applications.
Phase II applicants will need to hasten their applications as the last day for filing the applications will be 25 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.
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