Summary timeline and milestone
Myanmar has become a member of WIPO since 2001. Before the new trademark law was enacted, there was no law of trademark registration except trademark’s definition on Penal Code.
In 2016, a draft of new trademark law was in progress and expected to be passed in 2017. In August of 2017, the trademark bill was reviewed by Draft Law Committee of the Parliament and published for public comment.
In February of 2018, the trademark bill was passed by the National Parliament. In October of 2018, the trademark bill was reviewed by the Lower House’s Bill Committee. And it was pending until 2019.
On January 30, 2019, new trademark law was enacted by the Parliament. The new law was expected to standardize trademark registration procedure and adhere to International standards for Myanmar to participate in International Treaties of Intellectual Property as well as WTO.
The new law proceed in 2 stages of Soft and Grand Opening. The Law was expected to come into force in Myanmar from January 1, 2020. But both stages were delayed due to Covid-19 and Ministry of Commerce needed more time to completed their system.
“Soft opening” and “Grand opening”
On August 28, 2020, the Ministry of Commerce announced that the Soft opening period under Myanmar’s new trademark law launched on October 1, 2020 with establishment of the Myanmar Department of Intellectual Property (MDIP).
The “Soft opening” commerce to March 31, 2021. During this period, only the registered marks under the old practice and the marks being actually used in the country are allowed to be re-filed.
The “Grand opening” is from April 1st, 2021, when all new trademark applications are applicable.
Difference between old practice vs. new Law
| Old law & Practice | New Trademark Law | |
| Overview | Not actual law, it was just a registry Act
Registration by Declaration of Ownership and publishing Cautionary Notice. The registration shall deem as Prima Facie Evidence |
A new Law specified on main matters of Trademark registration and protection
The Laws was drafted under supervision of WIPO in compliance with TRIPS Agreement. |
| National Office | The Registry Office and local newspaper | The Intellectual Property Department |
| Registration systems | First-to-use rule | First-to-file rule
IP office will take consideration of old practice to grant trademark rights under the new Law |
| Protection initiation | With actual use evidences | From filing date of trademark application |
| Priority | Not available | Available |
| Filing process | There is no examination
The mark is granted by certified Declaration of Ownership from Registry Office Then, a Cautionary notice on the trademark will be published in a local newspaper to notify the ownership and against any potential infringement |
The filed or re-filed applications will be examineed by IP Department to comply with regulation under new Law.
If the mark does not involve non-Registrable elements and all required documents are sufficient, the mark will be published. Within 60 days from publication date, if there is no objection submitted, registration of the mark will be granted. Accordingly, the trade mark registration process will undergo five steps: (1) filing application; (2) formality examination; (3) substantive examination; (4) publication for opposition; and (5) registration. |
| Opposition | Not available
Any opposition must be filed as a lawsuit to Court |
Within 60 days from the publication date, any third party can submit opposition request to the registrar |
| Invalidation request | Not available | Third party may file invalidation request into the registrar at any time |
| Tenure of registration & renewal | 03 years from registration date | 10 years from the filing date of the application for registration |
| Renewal | The trademark must need to renewal every 3 years
Declaration of Ownership is re-submitted and Cautionary Notice is re-published in local newspaper |
The protection term can be renewed perpetually every 10 years for further 10-year periods
Renewal request will be filed at IP Office |
| Use of mark | Required
Evidence of use is to be submitted at the Court |
Not require in first 03 years from registration
After 3 year, if the mark is not used to the registered goods/services, any interested person may request of cancellation |
| Transfer of the right of mark | No recordation by registrar, just declare | Must be recorded by IP Department |
Predictive scenario
We hope that the new regime of trademark system of Myanmar will start with the new trademark Law, including establishment of IP Office, IP court and legal frames such as Rule, Regulations, Orders, Directives, Forms and online based computerized registry system.
The national IP system will comply and enable the country to be a member state of International Treaties in IP community.
The national trademark database will be available and published on WIPO’s page.
However, from scratch, it will take time, at least 1-3 years, to complete system, trademark examiners in IP Department, well-established procedure.
