The new Myanmar Trademark and Geographical Indication and Industrial Design Laws were signed by the President on January 30, 2019. Now for the first time, there will be an Intellectual Property Office to handle IP matters, including registration. While the laws have been signed, neither will come into force until further notification by the President. While it is not clear when such notification will issue, it is important to be aware of certain features of this new legislation, once enforcement is confirmed. The most important feature of the new Trademark and GI Law, assuming it proceeds through final formalities, is institution of a first-to-file system. There will be no automatic conversion of current trademark registrations to the new system. Accordingly, it will be necessary to refile to maintain coverage. While we expect that there may be a short transition period to re-register marks after the law comes into force, it is not yet clear whether trademark owners will be able to claim the priority of their older registrations. We therefore advise clients to review current coverage now and coordinate re-filings in anticipation of filing on day 1 of the effective date of the new law. In addition, there is reference in the law to the need to show evidence of use to support a trademark application; accordingly, trademark owners should begin to gather such evidence, including cautionary notices (still publishable), ads, office documents and other evidence of use.
Among additional features of the new Trademark and GI law are: (1) institution of formal and substantive examination, (2) recognition and registration of well-known marks and GIs, (3) a 10-year registration term (renewal available 6 months prior to expiration), (4) provision for oppositions to be filed 60 days of publication, (5) non-use cancellation for marks not used for three consecutive years, (6) possible license recordal requirement (details not yet clear) (7) acceptance of priority claims, though Myanmar has not yet acceded to the principal IP treaties, (8) criminal penalties for trademark infringement and counterfeiting, including up to three years in prison and a fine of MMK 5 million (about $3250 US) and (9) establishment of a Central Committee for Intellectual Property and an Intellectual Property Rights Agency, which, together, will have jurisdiction over the trademark registration system. The law also has given the judiciary the right to set up specialized IP courts, though it is uncertain whether this might occur.
Among the main features of the new Industrial Design Law are (1) institution of a first-to-file system, (2) a five-year term, renewable for up to 15 years, (3) availability of invalidation and cancellation actions, (4) a possible license recordal requirement (details not yet clear), (5) six-month Paris Convention priority (though adherence to Paris has not yet taken place), (6) additional enforcement (including criminal) provisions, (7) domestic and international novelty requirement for registration, and (8) employee rights to register under certain circumstances, though generally provision for employer ownership if the design was created within the scope of employment and at employer instruction.
While procedures and administrative bodies for these new laws are not yet in place, requirements for registration are set out. Accordingly, we recommend that rights owners audit their current, and consider any new, holdings so that (for example) evidence will be readily available when the laws become effective and procedures implemented. We will keep clients apprised of further developments, including timing of implementation, but recommend taking steps now to arrange for continued protection.