Myanmar Trademark Law 2019

1. Myanmar Trademark Law 2019
Re-filing of Registered Trademarks in Myanmar
Kowit Somwaiya
Managing Partner
LawPlus Ltd.
LawPlus Myanmar Ltd.
31 January 2020
Konishi & Nakamura, Nagoya, Japan
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2. 1
Kowit Somwaiya
Managing Partner, LawPlus Ltd. and LawPlus Myanmar Ltd.
Past Vice President, Intellectual Property Association of Thailand
Board Member, International Trademark Association
• B.A. (Education – English), Ubon Ratchathani Rajbhat University, Thailand
• LL.B., Thammasat University, Thailand
• LL.M., University of Illinois, USA
• Certificate of Instruction for Lawyers, Harvard Law School, USA

3. 2
 Introduction to Myanmar Trademark Law 2019
 Re-filing of Registered Trademarks
 Filing of New Trademarks
 Steps for Trademark Examination
and Registration
 Assignment and License of Trademarks
Presentation Topics

4. 3
 Trademarks were registered by registration of a Declaration of
Trademark Ownership (“DTO”) with the Office for Registration
of Deeds under the Ministry of Agriculture and Irrigation
 Trademarks were registered without examination
 Particulars of each registered trademark were published in a
newspaper under a Cautionary Notice (“CN”) every 3-year
period
 Lawsuits against trademark infringements were possible under
the IPR-related laws
Trademark Registration and Enforcement Before the MTL 2019

5. 4
 Passed by the Parliament of the Republic of the Union of
Myanmar on 30th January 2019
 Will become effective when the President announces its
effective date
 24 Chapters
 106 Sections
Myanmar Trademark Law 2019

6. 5
 Chairman: Vice President of the Republic of the Union of
Myanmar
 Vice Chairman: Minister of MOC
 Secretary: Person appointed by the President
 Joint Secretary: DG of DIP
 Members: VMs and DGs of relevant and other ministries, four IP
experts and two NGO representatives
 Develops trademark policies and strategies
 Coordinates with local and international organizations on
developing IP system of Myanmar
Central Intellectual Property Committee (“CIPC”)

7. 6
 Chairman: Secretary of CIPC
 Secretary: DG of DIP
 Members: DGs of relevant ministries, eight IP experts and five
NGO representatives
 Implements trademark policies and strategies developed by the
CIPC
 Reviews and decides on appeals filed by applicants against
orders and decisions of the Trademark Registrar and other
appeals filed under the MTL
Intellectual Property Agency (“IPA”)

8. 7
Authorities in Charge of Trademark Registration
CIPC MOC IPA
DIP (MIPO / TMO)
• Administer and supervise office functions
• Publish and keep records of trademark
registrations
Trademark Registrars
• Guide and supervise application filing
• Examine application
• Approve or reject application
Trademark Inspectors
• Inspect trademark and GI application
• Examine oppositions
• Support and report to Registrar

9. 8
 Trademarks
 Service marks
 Collective marks
 Certification marks
 Trade names
 Geographical indications
Marks and Other IP Protected under the MTL

10. 9
 Soft Opening Period (“SOP”) will be announced by MIPO for re-
filing of registered trademarks and will last for 6 months
 Re-filing of registered trademarks and filing of used trademarks
may also be allowed for a period of 6 months after the grand
opening date (in addition to the SOP of 6 months)
 Registered trademarks must be refiled, examined and registered
 If any registered trademark is not re-filed, it will not be recognized
and protected under the TML
 Trademarks used in Myanmar but not registered can be filed
during the SOP
Re-filing of Registered Trademarks

11. 10
 Notarized PoA from the applicant to Myanmar representative
 Original of the registered DTO
 Original of the published CN
 Specimen of the trademark
 Specifications of goods and/or services
Requirements for Re-filing Registered Trademarks

12. 11
 Notarized PoA from applicant to Myanmar representative
 Evidence of use of the trademark in Myanmar
 Specimen of the trademark
 Specifications of goods and/or services
Filing Requirements for Used Trademarks

13. 12
 Grand Opening (“GO”) will be announced for applicants to file
applications for new trademarks
 GO will start when the President publishes an announcement for
the TML come into force
 New trademarks cannot be filed during the SOP
 New trademarks can be filed after the GO
Filing Applications for New Trademarks

14. 13
 Application with name and address of the applicant
 Notarized PoA if the applicant is not a Myanmar national
 Name, NRC number and address of a Myanmar representative if
applicant is not a Myanmar national
 Complete and clear description of the trademark
 Class(es) and specifications of goods and/or services
Filing Requirements for New Trademarks

15. 14
Steps for Trademark Examination and Registration
1. Filing of Application
2. Formality Check of Application
3. Absolute Ground Examination
4. Publication for Opposition
5. Relative Ground Examination
6. Registration or Rejection

16. 15
 Non-distinctive inherently
 Directly descriptive of the goods and/or services for which it is applied
 Generic (the mark has become customary or common in the trade or
industry of the goods and/or services for which it is applied)
 Misleading (its characteristics are misleading to the public or the trade /
industry)
 Adversely affecting the public order
 Directly imitating a flag or symbolic feature of a state or an international
organization
 Being or including any of the emblems specifically protected under
international agreements of which Myanmar is a member
Absolute Grounds for Refusal of a Trademark

17. 16
 Trademark that passes absolute ground examination is
published for 60 days for opposition
 Opposition can be filed on any relative grounds and/or absolute
grounds of refusal
 MIPO notifies the applicant if opposition is filed
 Applicant can file a counterstatement within 60 days from
receiving opposition
Publication and Opposition

18. 17
 Identical with or confusingly similar to any
• senior pending trademark
• registered trademark
• well-known trademark
 Bad-faith filing because the filed trademark is owned by another
person
 Infringing any other IP rights of other persons
Relative Grounds for Refusal of a Trademark

19. 18
 If opposition is not filed or is filed but fails, the trademark will be
registered
 Applicant must pay the registration fee within 60 days from receiving
the order from the Registrar
 If Registrar refuses the application, the applicant can file an appeal
with the IPA
 Appeal must be filed within 60 days from receiving the order or
decision of Registrar
 If the appeal with the IPA fails, the applicant can further appeal with
the Intellectual Property Court within 90 days of receiving the IPA
decision notice
Registration or Rejection

20. 19
Each trademark registration:
 Is valid for 10 years from the application filing date
 Can be renewed every period of 10 years within six months
prior to the expiration date
 Is subject to cancellation for
- non-registrability
- non-use
Term of Protection, Renewal and Cancellation

21. 20
 Pending and registered trademarks can be assigned
 Registered trademarks can be licensed
 Each Trademark License Agreement and Trademark Assignment
Agreement must be made in writing and signed by the parties
 Trademark assignment and trademark license are effective only
if and after they are notified to the Registrar
Assignment and License of Trademark

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