New Era Of IP Protection Begins In Myanmar As Trademark Law Takes Full Effect

• Law Firm: Tilleke & Gibbins
• Subject Matter: Intellectual Property, Trademark
• Author: Ms Yuwadee Thean-Ngarm, Sher Hann Chua and Khin Myo Myo Aye
• Published date: 19 May 2023

Myanmar's long-awaited first-to-file trademark registration system came into full effect on April 26, 2023, with the "grand opening" of the country's Intellectual Property Department (IPD). This followed the issuance of the Trademark Rules and other related notifications at the beginning of April, in conjunction with the Trademark Law coming into force.

Full enforcement of this law is a milestone in Myanmar's long quest to establish a functioning, modern framework for trademarks in particular and for IP in general. The Trademark Law was passed in 2019 as part of suite of laws meant to modernize the country's treatment of IP rights. Previously, IP rights holders in Myanmar relied on outdated systems based largely on laws from the colonial period under British rule.

For example, brand owners could achieve some measure of protection through establishing use in the country and recording their marks with the Office of Registration of Deeds (ORD). However, these protections were limited and did not provide the same level of security and legal recourse as a comprehensive trademark registration system. Without a proper system in place, businesses were vulnerable to infringement and counterfeiting, which could be detrimental to their reputation and bottom line. The new Trademark Law will provide much-needed protection to brand owners and encourage innovation and investment in Myanmar, bringing the country in line with other Southeast Asian nations that have already implemented modern IP laws and systems, such as Thailand and Vietnam.

Features of the Trademark Law

In addition to the increased protection and streamlined filing procedures, the Trademark Law offers a range of other salient features:

• Administration: The core government ministry administering the new Trademark Law is the Ministry of Commerce Four other ministries'the Ministry of Information; the Ministry of Industry; the Ministry of Agriculture, Livestock and Irrigation; and the Ministry of Education'are named as having supervisory roles.
• Requirement to Refile: If trademark owners that previously recorded their marks with the ORD, or did not record their marks but can provide evidence of actual use in Myanmar, want to enjoy rights relating to their marks, they must apply for registration in accordance with the new law.
• Opposition: Oppositions are allowed for the first 60 days from the date of publication. Oppositions can rely on relative grounds of refusal (e.g., identical or similar to existing...