Guide to Trademark Registration in Myanmar

Introduction

Myanmar, as a member of the World Trade Organization, the World Intellectual Property Organization, and ASEAN, is required to follow the TRIPS Agreement and the ASEAN Framework Agreement on Intellectual Property Cooperation. Therefore, on January 30, 2019, the Myanmar government enacted a trademark law. On March 31, 2023, the trademark rule was also issued.  According to State Administration Council notification No. 82/2023, the law went into effect  on April 1, 2023.

Myanmar implemented a first-to-file system for trademark registration on April 1, 2023. Therefore, not only must the previous owner of a mark registered at the Office of the Registration of Deeds re-file their marks, but new mark owners can file their marks with Intellectual Property Department in order to enjoy the benefit of Myanmar’s new trademark law protection. Also, in order to enjoy the right of priority, the old owners are required to file their previous registered mark no later than October 26, 2023.

The purpose of this newsletter is to provide general information about the legislative and regulatory framework governing trademark registration in the Union of Myanmar.

Definition of Mark

Trademark Law defines “Mark” means any visually perceptible sign in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. This expression includes the trade mark, service mark, collective mark and certification mark. Thus, the mark refers to only visual signs capable of distinguishing the enterprise’s goods or services that can be protected in Myanmar.

“Trade Name” is defined the name or designation identifying and distinguishing an enterprise.

Application Requirements

To register the mark in Myanmar, the owner must submit an application to the IPD, Ministry of Commerce. The applicant may file a application for each mark with multiple classes or each mark with a single class.

Foreign mark applications need to be represented by a licensed trademark agent and the representative form (TM 2 Form) will be notarized by the notary public.

The domestic applicant has two options for filing the trademark application: either on their own or with the assistance of a trademark registration representative.

Applications for mark registration must include the names and classes of the goods and/or services in accordance with the Nice Classification. The transliteration and translation are required when the mark contains words that are not Burmese or English.  If the mark contains colours, the colours must be claimed as a distinctive feature of the mark.

The basic requirements of trademark filing are as below:

1. Name of the Applicant;
2. The Applicant’s passport number or the Company’s registration number;
3. Address of the Applicant;
4. Specimens of the mark to be registered (in high solution);
5. The International lists of goods/ services of the mark;
6. For priority claims (if any), certified copies of the priority documents;
7. Representative Form (TM 2 Form); and
8. Official Fee for each class.

As a preliminary examination, the registrar will check out the formality application. If no amendments of the filed mark application are required, the IPD will publish the mark application for opposition. If no one objects to the mark application within 60 days, the IPD will notify for the grant of mark protection, and the certificate of mark registration will be issued if the registration fee is paid. Myanmar’s current registration process will probably take a year.

Priority Claim

Applicants have the right to claim priority based on an earlier application in a foreign nation that is a member of the Paris Convention or the World Trade Organization within six months of the date of filing at the foreign trademark office.

Applicants may claim priority after the date of the worldwide display in a foreign nation that is a member of the Paris Convention or the World Trade Organization within six months of the date of the first disclosure of the mark there.

Prohibitions on Registration

A mark that falls under any of the following absolute grounds for refusal shall not be registrable:

• lack of distinctive character;
• descriptive grounds;
• affecting the public order, morality, faith and conscience, integrity of the State, or venerated culture, and cherished customs of ethnic groups of the State;
• becoming the generic or customary in the current language or in the bona fide and established practices of the trade;
• misleading the public or trade circle;
• consisting of the total or partial reproduction or imitation of a flag, armorial bearings, or other emblems adopted by a State or an international intergovernmental organization; an official sign or hallmark indicating control and warranty adopted by a State; abbreviations and names of an international intergovernmental organization, unless authorized by the competent authorities of the State or of the relevant international intergovernmental organization;
• using the emblems protected under international treaties to which the State is a contracting party.

A mark that falls under any of the following absolute grounds for refusal shall not be registrable:

• if it is identical or similar to a registered mark or earlier applied mark or priority claimed mark in the name of a different person;
• without the permission of the relevant person or legal entity, using the mark affecting personality rights of a person or the reputation of the legal entity;
• if the mark infringes the copyright or industrial property right of a third person;
• if the mark is filed in bad faith;
• if it is identical with or similar to a well-known mark.

If the applicant fails to comply with one of those points, the IPD will refuse to register the mark in Myanmar. As a result, the applicant or his representative will respond to IPD regarding the rejection within 60 days. In the meantime, the applicant may request a time extension from the IPD.

Term of Registration of Mark

A registered mark is protected for ten (10) years from the date of filing. After the ten (10) year registration term expires, each registration may be extended for another ten (10)  year period.

The Rights of Registered Mark

The registered mark owner shall have the following rights:

(a) exclusive right;

(b) the right to sue the infringer in criminal and/or civil action;

(c) the right to prohibit any unauthorized third party from using the registered mark in the course of trade; and

(d) the right to transfer or license the rights of the registered mark to anyone. The transfer or licensee of the registered mark should be recorded with the IPD.

Penalties

Any violation of counterfeiting a mark, applying a counterfeit mark to goods, or having any materials or implements that could be used to commit a counterfeiting offence without the consent of the mark owner is punishable by imprisonment for a term not exceeding three (3) years, a fine not exceeding five (5) million kyats (approximately 2,400 USD), or both.

Any of the following offenses: possessing counterfeit mark goods; importing into or exporting from the State are punishable by up to two (2) years in jail, a fine of up to five (5) million kyats (approximately 2,400 USD), or both.

A person who breaches all of the aforementioned provisions after being previously convicted of the same offence is furthermore subject to imprisonment for a minimum of three (3) years and a maximum of ten (10) years as well as a fine of no more than ten (10) million kyats (approximately 4,800 USD).

The mark owner may also file a civil action against the infringer for damages.

Mark owners should make plans now to protect their rights in Myanmar, where trademark registration has been made available on a first-to-file basis as on April 1, 2023.  A timely application could reduce the chance of use and assist in preventing third parties from registering comparable marks.

We hope you enjoyed reading and found our newsletter helpful.

 

The information presented here is given solely for informational reasons and is not meant to be construed as legal advice. Our team would be delighted to assist you with registering your mark in Myanmar.  Should you have any questions or require further information, please do not hesitate to contact us via email info@mziplaw.com , lawyer@mziplaw.com.