Key takeaways
- Implementation of the new Trademark Law in Myanmar ̶ The "soft opening period," which began on 1 October 2020, was announced by the MOC in Order No. 63/2020 ("Order"). The closing date was not stated in the Order but many expected the soft opening period to last for six months, followed by the "grand opening" of the new trademark registration system. Accordingly, many had envisaged the implementation of the new trademark registration system to only consist of two phases (i.e., the soft-opening period and the grand opening).
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 that have enjoyed use in Myanmar (for instance, evidenced by publication of a cautionary notice) ("Registered/Used Marks") whereas all other trademarks ("New Marks") may only be filed after the grand opening.
However, following the training sessions conducted by the MIPD, we were made to understand that the implementation of the new trademark registration system may now entail two additional phases. More importantly, Registered/Used Marks may continue to be filed after the soft opening period.
Phase I ̶ We are presently in Phase I. During 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," i.e., the first day of the grand opening (to be announced).
Payment of the official fees is currently unavailable during Phase I.
Phase II ̶ Phase II is also considered part of the soft opening period. The only difference is that payment of the official fees will be made available. Just like Phase I, only Registered/Used Marks are eligible for filing during this transition Phase II period. Similarly, all trademark applications filed during this period (as in Phase I) will be given a common filing date, i.e., the first day of the "grand opening" (to be announced).
We will provide an update as soon as there are further details or an official announcement by the MIPD regarding the payment of official fees.
Phase III ̶ The grand opening of the new trademark registration system will take place during Phase III.
During this phase, New Marks will be eligible for filing under the new electronic trademark system. All applications of New Marks will bear the filing dates of the applications, i.e., the date on which the MIPD receives the complete application and stipulated official fee.
From the training sessions conducted by the MIPD, it now appears that filing of Registered/Used Marks may continue during Phase III, i.e., upon the grand opening. All applications of Registered/Used Marks filed during Phase III may be given a common filing date, but later than those given for applications filed during Phases I and II. There has been no clarification when this later common filing date will be.
Phase IV ̶ Phase IV is the final phase. Unlike in Phase III, all applications of Registered/Used Marks filed during Phase IV will not be given a common filing date.
In other words, all applications of New Marks and Registered/Used Marks will bear the actual filing dates of the applications, i.e., the date on which the MIPD receives the complete application and stipulated official fee.
As of today, there are no official announcements by the MIPD regarding the planned phases, and given the uncertain situation in Myanmar, the planned phases may not eventually be implemented.
We will provide an update once we receive confirmation of developments.
- Power of attorney/appointment of representative ̶ For all trademark applications filed under the new electronic trademark system, it is mandatory for the official representative appointment form (Form TM2) to be submitted. If Form TM2 is executed by an applicant outside of Myanmar, it must be notarised but need not be legalised.
Based on our unofficial discussions with the MIPD, during Phases III and IV, Form TM2 must be submitted together with the trademark application in order for the trademark application to meet the requirement of a "complete application" and receive the filing date.
We will share a copy of Form TM2 once it is finalised by the MIPD.
- Trademark registration process ̶ All trademark applications will first go through formality examination and substantive examination based on absolute grounds (for instance, distinctiveness) by the MIPD ("First Examination").
If a trademark application passes the First Examination, the trademark will then be published for opposition in the trademarks journal for a period of 60 days.
If the trademark application is opposed by a third party, the MIPD will then conduct an examination based on relative grounds (i.e., objections arising from identical and/or similar prior trademarks) and re-conduct another round of examination based on absolute grounds ("Second Examination").
If the trademark application is not opposed during the opposition period or passes the Second Examination, the MIPD will then publish the trademark for grant and subsequently issue the certificate of registration.
For more information on the complete trademark registration process in Myanmar, please refer to the flowchart available on the MIPD's official website here.
Given that earlier trademarks which are considered similar or identical do not automatically act as a bar to registration, the trademark registration process in Myanmar is different from the standard trademark registration process adopted in many jurisdictions (whereby a trademark will be examined based on relative grounds and earlier trademarks would automatically act as a bar to registration).
Therefore, similar to the trademark registration process adopted in the European Union and the United Kingdom, the onus is on the proprietor of an earlier trademark to monitor published trademarks and object to the registration of a trademark by initiating an opposition action.
We will continue to monitor these developments closely. Should you have questions or concerns, please contact any member of our team.
Please note that our Myanmar team members have been experiencing recurrent power outages in the last few weeks, and the frequency of these outages is expected to increase in the coming months. We therefore seek your kind understanding if there are delays in our response.
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