On 28 August 2020, the Ministry of Commerce issued Order 63/2020 for the filing of applications to register trademarks pursuant to the Trademark Law (“Order”).
This Order applies to existing trademark owners in Myanmar (“Existing Owners”). Existing Owners include both trademark owners that have registered their marks with the Office of Registration of Deeds (“ORD”) as well as owners of trademarks which though not registered with the ORD, remain in use throughout the country. This Order paves the way for the transition from the ‘first to use’ to the ‘first to file’ system for trademark registration in Myanmar.
Existing Owners may obtain priority rights over the trademark and opt for online filing starting from 1 October 2020. According to the Order, the date on which the application (along with filing fees and valid documentary evidence) is accepted will be considered the official filing date of the trademark. Existing Owners will enjoy priority rights from this point onward.
For the re-registration process, trademark owners must specify the exact list of goods or services for which the mark is used in the application. The re-registration process may not be used to expand the types of goods or services covered by a particular mark. The class of goods or services under which the mark is registered must be detailed as per the Nice Classification. The official application filing fees and the payment methods of such fees shall be declared before enforcement of the Trademark Law.
As proof that the trademark is registered or being used in Myanmar, Existing Owners may furnish any of the following forms of documentary evidence:
- A copy of the trademark filed with the ORD;
- A certified true copy of the certificate of registration issued by the ORD;
- Evidence of a cautionary notice featured in a newspaper or any other medium;
- Proof of use of the mark in the country;
- Proof of advertising of the mark in a sales promotion or marketing event;
- Tax receipt or other receipts for expenses;
- Proof of transfer of ownership or change of name, if the applicant is different from the registered owner of the trademark; and
- Other documentary evidence.
The Order states that re-registration application submissions must initially be directed through law firms and service provider companies as specified by the Department of Consumer Affairs. Later, the Existing Owner may themselves apply for re-registration. We believe that the MOC will issue further orders or notifications clarifying the timing as to when applications must be routed through service providers and the point from which self-applications may be performed.
Only Existing Owners may enjoy this priority right. Other applicants may file an application to register a trademark after the Trademark Law enters into force.
Through the issuance of this Order, it is clear that the Trademark Law will enter into force soon (before 1 October 2020). This Order is a welcome move and represents a significant milestone towards formalizing the online trademark registration process in Myanmar. With comprehensive market knowledge and longstanding expertise, DFDL stands ready, prepared and fully equipped to assist you with the online re-registration process during this soft opening phase. We would be happy to discuss any of the above with you in further detail and offer our services to ensure a seamless transition from the ‘first to use’ to ‘first to file’ regime in Myanmar.
The information provided here is for information purposes only, and is not intended to constitute legal advice. Legal advice should be obtained from qualified legal counsel for all specific situations.
Authors
Partner, Deputy Managing Director & Head of Banking and Finance Practice, Myanmar
Junior Legal Adviser, Myanmar
Contact
Partner & Managing Director, Myanmar/Singapore
