Myanmar's coup and trademark refilings

Myanmar’s military coup is creating great uncertainty for the country. The IP system is drawing towards the close of the soft opening period. This is the time during which trademarks registered under the old deposit system at the Registry of Deeds can be reapplied for at the new IP Office.  This process is due to complete on March 31st after which no more refilings can occur. At that point the full Trademarks filing system is due to open for new applications. 

Right now the e-filing system continues to operate for refilings. Due to Covid, IP attorneys are mainly working from home. So at present IP owners can send their instructions and continue to refile online. 

It is not clear whether the coup will cause any interference with the trademark soft opening period or the development of the IP system generally. IP Owners need to monitor for news.  It is strongly recommended not to wait until the last minute (i.e. late March) to submit refiling instructions as any delay may mean missing the soft launch loss the validity of earlier recorded marks.

A further concern is sanctions. If doing business in Myanmar becomes a risk, then trademark filings for foreign companies may become impossible, (as they are in certain other countries under sanctions). Again, a reason not to wait to refile in case the door closes earlier than end March. 

Myanmar trademark soft launch has started with some expected and unexpected teething problems

 

The Myanmar Intellectual Property Department (IPD) has finally begun receiving trade mark applications. The first phase of the opening has begun on 1 October 2020 and is considered a ‘soft opening’ until the new trade mark law comes into full force. During this period, trade marks filed previously under the Registration Act 1918 with the Registrar of Deeds can be refiled. This will secure the earlier date as the priority date, and parties who have been using their trade marks in Myanmar may also refile with proof of use. The soft opening period is to last six months.  

 

A large number of marks have already been filed after a week’s time, and there will be a few days of down time for e-filing system maintenance from the 7th to 12th of October. Unfortunately, a few IT teething problems have been encountered such as files being returned to the wrong place.  One of the forms TM2 has not been created yet, therefore the IPD is proposing that these related marks be filed in April 2021. 

 

Meanwhile the Registrar of Deeds still accepts new trade mark applications, a parallel registration available during the soft-opening period. However, a COVID related problem has also arisen as a Stay-at-Home restriction has been imposed on 28 areas of the Yangon Region. This includes the area where the Registrar of Deeds is located, which is going to make filings challenging in the coming weeks since there is no e-filing in the region.

 

The IPD is expected to open on 1 April 2021. Theoretically, after that day, new trade marks can be filed and the patents and designs registries will may possibly be open as well. Much depends on the new IP laws being ready to take effect with all the implementing regulations, as well as the IPD's own systems and capacity in place. 

 

The IP community in Yangon will surely be busy over the next six months.

 

 

Myanmar trademark soft launch to finally start in October

Myanmar’s Ministry of Commerce, which now houses the IP Department, issued notification no. 63/2020 on 28 August 2020 announcing the launch of the soft-opening period for refiling trademarks. At long last the soft-opening period will start on Thursday 1 October 2020. See here for background.

Existing trademark holders who recorded their trademarks under the previous system are required to re-file their marks under the new system in order to preserve their earlier priority date. If not any later new filing will be granted a priority date of the date of filing.

Applications in the soft launch period may not add goods/services over those for which they are already registered under the old system. Any marks that don’t qualify for refiling during the soft opening period will only be able to be filed after the soft opening period, probably in 6 months time.

Myanmar TM system still not launched

Myanmar's new trademark system launch was supposed to take place in January. It was to start with a 'soft launch' to allow re-registration of marks previously deposited at the Registrar of Deeds. The full opening of the IP department is at present scheduled for World IP Day in April. See here for full background. 

However the start of January saw no progress and as we draw towards the end of the month, there is still no clear launch date. 

Myanmar trademarks applications will soon start

In 2020 the new trademarks law will come into effect. A number of practical issues are now taking shape:

- there will be a refiling period for marks registered under the old law. This is believed to start in January 2020 and run until April. 
- the formal filing of new marks is hoped to launch on World IP day in April 2020.
- use in Myanmar will give rise to prior rights. Specific evidence will be needed. There are time limits to make such a prior use claim. 
- after an application is filed certain documents can be late filed, such as POAs.
- filing fees will vary depending on the basis of the claim to rights.

The IP Department is still in formation stage. The move from Ministry of Education to Ministry of Commerce has not yet completed. It is still a case of 'watch this space'. 

IP owners will need to plan their 2020 trademark filing strategy soon. Older marks can be refiled, newer ones filed afresh. IP owners can expect 2020 to be a busy year for securing rights in Myanmar. 

Myanmar IP laws update

Laws pass through the legislative process in Myanmar as follows:-

1. Bills go to Upper House Bill Committee
2. Bills go to Lower House Bill Committee
3. Bill then goes back to Upper House Joint Committee for review
4. Bill then goes to Assembly of Union for debate /approval of Bill
5. Approved Bill then goes to President for signing to enact the Bill as a law within 14 days or receive comments, (thus a Bill may return to the Assembly with comments of the President within 14 days for further review)
6. Bill goes to President again and whether or not the President agrees it, the President shall sign and Bill is enacted as law
7. Notification is then be issued within a period of a few months to fix the date for the law to enters into force on the prescribed date in the Notification

If a Bill is not enacted as a law within 14 days from the date of receipt of the Bill at the President Office, it must be returned to the Assembly with the President’s comments.  

The Patent, Design and Trademark laws are now at stage 6; they are due to be signed into effect. However the challenge now lies in stage 7, because of the program of implementation required for registration based IP rules. Implementing rules, a new IP Office, the oversight committee and a physical move to the Ministry of Commerce al need to be planned and scheduled before the Notification can be issued. Once these laws have a date of entry into force, IP owners must be able to file their patents designs and trademarks. Right now the implementation team is working with the Ministry of Commerce to create the plans to put everything in place so that the Notification can be issued.

 

Meanwhile the Copyright Bill is at stage 5. This law does not have mandatory registration of course, so it can take effect immediately. However there are concerns about how the law will apply to certain existing translations and music (which could be rendered infringing), and how the transition period will work. Potentially some debates need to be resolved before the President can sign it.

Myanmar Parliament passes trademarks law

The long-awaited Myanmar Trademark and Geographical Indication Law was passed by the Lower House on December 12, 2018 following its adoption by the Upper House on February 15, 2018. The new law is likely to be enacted at the end of December 2018 or within the first quarter of 2019.

Among several notable changes, the new law introduces a "first-to-file" system that requires no evidence of prior use or ownership in Myanmar. The law significantly improves the ability of trademark owners to counter bad-faith trademark squatting and, in cases where infringement is found, provides higher potential damage and fine amounts and customs actions. In addition, the law introduces substantive examination of applications, oppositions, invalidation and cancellation actions, and envisages establishing a specialized Intellectual Property Court to handle all IP disputes. The new law also clarifies protection for “well-known” trademarks, provides trademark publication and renewal, makes available multi-class applications and priority claim, and extends the availability to register shape and packaging as trademarks. Geographical indications (e.g. Champagne, Cognac) are also protected through registration.

There is no procedure for automatically re-registering marks which are recorded under the current system. Therefore, marks and geographical indications currently recorded with the Registry of Deeds and Assurance must be re-applied for once the law enters into force, otherwise they will lose their validity. This is according to Section 92 of the new law, “The trademark owner who has registered at the Office of Registrar of Deeds and Assurances in accord with the Registration Act before this law is coming into force, desirous of enjoying the rights of the registration of mark, shall file an application in accord with this law to get the rights of registered mark.” The transition period to re-apply for a mark or geographical indication will probably be three to six months after the law is enacted/entered into force.

The documents required to re-filing marks are: 

1.   Completed application form provided by IP Office;

2.   Original duly recorded Declaration of Ownership of Trademark at the Registry of Deeds and Assurances;

3.   Evidence of use may also be required such as photo of the product/shop in the Myanmar market or Customs Clearance;

Other IP laws are also expected to be enacted soon by the Lower House.

Myanmar law passes lower house

According to the Ministry of Education, the Trade Mark Bill was reviewed and debated at Pyithu Hluttaw (Lower House) Bill Committee on 5 November 2018.

Members of the Pyithu Hluttaw Bill Committee, the Pyithu Hluttaw, Committee of Inherent Rights of Citizens, Economic and Financial Development Committee, Ministry of Education, Union Attorney Office and Legal Affairs and Special Cases Assessment Commission attended the debate.

The Bill should be submitted to the Pyithu Hluttaw for final comments, debate and vote at the upcoming parliament session which will start on 12 November 2018. The Bill might therefore pass into law before the end of this year.

The Myanmar IP law saga slowly heads to conclusion

 
With Myanmar's IP laws promised for many years, but still not enacted, the slow pace of government in contrast to business is being exposed. The IP law drafts are still with the Parliament. The Law Drafting Committee passed the Draft IP Laws to the Parliament on January 17, 2018 for a final debate.  The hope is now that the laws will be enacted in the coming few months. They will still need a period before coming into force, then there is the preparation of the relevant subordinate rules and regulations. But at least 2018 now appears to be the year they will be enacted. 

In another twist the primary Ministry will be changed from Ministry of Education (formerly known as the Ministry of Science and Technology) to the Ministry of Commence and as a result, right now, Ministry of Commerce is preparing the new IP infrastructure including transferring staff from the MOE.

The launch of the Fashion Designers Entrepreneur Association in February was a reason for that industry to criticise the lack of IP progress. Mogok Pauk Pauk, vice-chair of the association complained to the media "people are copying our designs and ....destroying our trade because they have money and we don’t have copyright,” she said.

This will be an important year for Myanmar and IP development.

Myanmar's future IP office

Myanmar’s proposal for the establishment its IP department is now becoming clearer. The government plans to set up an Intellectual Property Committee led by the Ministry of Education (which incorporates the old Ministry of Science and Technology), including various NGOs and experts as well as the Director General of the IP Department. The Committee’s function will be to set national IP policies and plans, review international IP agreements to consider acceding to and through various working groups perform various other IP related functions such as overseeing issues and taking action relating to IP infringement.

The IP Department (which sits under the Committee) functions will include government coordination, implementing the Committee’s policies and plans and reporting to the Committee, as well as liasing with overseas IP bodies, setting fees, running the IP registries, IP publication and other functions.

The Director General appoints the registrars and examiners for each IP registry. Each Registrar will run the application and registration processes, including granting IP rights and oppositions. The IPO will also have a IP Policy & Planning department as well as Education & Awareness, and the usual administrative functions.

New suggestions on the transition from the existing deposit system to the new system are being made now. It appears some form of re-filing will be needed, the precise scope and effect of which will be revealed in new regulations.
 

 

 

 

 

 

 

Draft Myanmar trademarks law

The draft trademark law (“Draft Law”) was published in Myanmar newspapers earlier this month for public comments. Overall, the Draft Law complies with the TRIPS Agreement, which is good news.

Highlights of the Draft Law are:

•The new rule is that ownership of a mark would go to the first-to-file and no longer to the first-to-use;

•The Myanmar Intellectual Property Office ("MIPO") will be established under the Ministry of Education;
•Registrable marks would include trade mark, service mark, collective and certification marks;
•The Draft Law would also protect geographical indications;
•MIPO would conduct formality and substantive examination of marks;
•Opposition and cancellation actions would be available;
•Well-known marks would be protected against misuses ;
•Priority and exhibition rights would be available;
•There is no procedure for automatically re-registering marks which are recorded under the current system. Therefore, all marks currently recorded would need to be re-filed and examined once the new law enters into force in order to gain protection in Myanmar;
•There is no provision addressing any potential conflicts between marks which are recorded under the current system and/or used in Myanmar and marks which would be registered once the new law is enacted, which is likely to cause legal uncertainty;
•Remedies for enforcement would be administrative (customs) criminal and civil. 

The Draft Law is now being reviewed by the Draft Law Committee of the Parliament. The Trade Mark Law could be enacted before the end of this year.

Myanmar draft IP laws published

The IP world in Asia has been awaiting the promised new IP laws in Myanmar after the country began opening up several years ago. Most of its IP system dates from 50 years ago or more. A lot of initial activity tailed off. Exhaustion set in amongst many observers. Long drafting and consultation processes, elections and political difficulties meant that IP was not prioritized.

 

However final draft laws on Patent, Industrial Design and Trade Mark were published in two parts on July 27 and July 28, 2017 for public comments prior to being submitted to Parliament. This is expected to be the last chance for comments before the enactment.

Myanmar counterfeiting case

U Tint Naing Vs. Daw Kyu Kyu San & others is a rare example of a criminal counterfeiting case from 2015 in the Yangon courts. It began when the Myanmar distributor on Korean company Nature Republic Co. Ltd Korea took action against 4 shop owners in Yuzana Plaza, Yangon claiming they were selling counterfeit cosmetics.  The police then further arrested a wholesaler and discovered the fake goods were imported. The 4 retailers cooperated and the wholesaler paid compensation. Public apologies were published in local newspapers and the Court eventually discharged the defendants.  

Most fakes in Myanmar come overland from China. As yet no trademark law exists, but it is possible to enforce other rights.

Trademark disputes in Myanmar

Danish beer brand Tuborg is owned by Carlsberg. They created a localised version of the brand for Myanmar, called tu po which is also written in local script. That is also a name for Thingyan, Myanmar's traditional water festival. Meanwhile Myanmar musician Sayar Myoma Nyein also wrote a song called the same name in the 1940s, which is often played at the festival. 

 

The composer’s son threatened to sue Carlsberg because of the inappropriate use of the term for alcohol. The son probably has no copyright claim due to the age of the song (Myanmar has only limited copyright protection as its copyright law dates from 1911). He also has limited, if any, trademark rights (given is no real trademark law exists yet). The brewer nevertheless changed its packaging and brand to avoid a public and potentially ugly cultural battle. 

 

Of course the irony is that there is still no formal trademark law in Myanmar. What this dispute shows is that trademark conflicts are already happening and the patchwork of poor and old laws in place must be navigated until the government enacts its promised suite of IPR laws.

Well known mark infringement case in Myanmar

The concept of well-known trademarks is not mentioned in the Registration Act or Criminal Code of Myanmar. As such, it remains unclear whether well-known marks are protected. On August 11, 2015, the Pabedan Township Court in downtown Yangon ruled in favor of Mitsubishi Electric Corporation in a trade mark infringement case against an importer and distributor of infringing breakers bearing the mark MITSUBISHI (Criminal Regular Case no. 380/2014  U Zayar Lwin, Mitsubishi Electric Corporation & PME Co, Ltd vs. U Hla Myint).

The Defendant was condemned to a fine and imprisonment under Section 486 of the Criminal Code. The Court ruled that "The Plaintiff's products have been officially distributed by PME Co., Ltd and sold worldwide under the famous trademark Mitsubishi registered in more than 140 world nations. The Defendant has been running a shop selling electrical products for more than 40 years and based on evidence provided by the Plaintiff, the famous character of Mitsubishi cannot be unremembered or unknown to the Defendant."

In determining of the sort of factors that constitute whether a mark is regarded as well-known, the court looked to the degree of recognition by the relevant sector of the public in Myanmar, the duration, extent and geographical area of the use or promotion of the mark, the sort of registrations or applications for registration and an assessment of value associated with the mark in Myanmar and abroad. This decision brings hopes to trademark owners in protecting and enforcing their marks in Myanmar and should create a pathway to the long awaited draft trademark law to also protect well known marks. 

The never ending delay in Myanmar's Trademarks law

The Myanmar trademark law has been promised for a couple of years now.
 

The draft Trademark Law no. 14 has been reviewed and approved by the Attorney Generals Office. It was submitted to Parliament in September 2014 but it has not yet been examined or discussed. Recently, the WTO decided that all Least Developed Countries, which includes Myanmar, will have until July 2021 to enact IP legislation under the TRIPS Agreement. As a result, the pressure on Myanmar to enact IP/trade mark laws has significantly reduced. 

On the political side, there will be a general election in April/May 2015 and it is unlikely that the Myanmar Government or Parliament will make any push for the Trademark Law to pass before the election. So it seems probable that no new trademark law will be enacted in 2015.

There is still no proper Trademark Office as yet and it will take at least 18-24 months to recruit and train trademark examiners, enact implementing regulations etc. Therefore, the most plausible date for the Trademark Law to become effective and for trade marks to be filed under that new law is now looking more like 2016-7.