The long wait is finally over. After more than 25 years, Myanmar has finally come out with its new Trademark Law beginning with its soft opening on October 1, 2020 and soon, its formal launch.

“The new law will greatly enhance the ability of brand owners to protect their trademarks,” says Daniel Greif, director and senior trademark attorney at Schmitt & Orlov in Bangkok, who assisted on providing insights and proposed drafting of the new Myanmar trademark law for the past decade. “The new law provides clarity and certainty in the registration and protection processes. These enhanced processes will provide greater certainty to businesses as to the investments they make on brands and other intellectual property. Thus, companies will be more willing to invest in Myanmar as their trademarks and other intellectual property assets will be well-protected.”

Law firms in Myanmar pointed out in multiple e-mailings and website postings that this period for online filing of the applications is available only for the following two types of trademark owners: 

• Owners of trademark(s) previously registered at the Office of Registrar of Deeds and Assurances (ORD); or
• Owners of trademarks which are in actual use in the Myanmar market, with or without the registration at the ORD.

Kelvin Chia Yangon reported in a client alert email that, at the opening ceremony, the Myanmar Intellectual Property Department (MIPD) announced that for applications filed during the entire duration of the soft-opening period, no filing date would be accorded to the applications as of yet – and that such filing date shall only be accorded at the grand opening of the law, upon payment of the fees and when the required particulars have been provided. “These applications will then be subject to substantive examination at the grand opening,” the firm said. “Essentially this means that the first-to-file system shall only be implemented at the grand opening.”

The MIPD has likewise announced that it is in the process of setting up online payment facilities for the payment of official fees (which are not collected at the moment of filing during the soft-opening) and that there are plans for Myanmar to adopt the Madrid system for trademarks in the future, Kelvin Chia reported in its client alert.

Lorraine Tay, a partner at Bird & Bird in Singapore, says that brand owners should file their applications as quickly as possible, and definitely during the soft opening.

“It is our understanding that applicants may re-file their trademarks anytime during the soft opening; that is to say, it does not matter whether applicants re-file on the first or last day of the soft opening period,” she wrote on the firm’s website. “These applications will only undergo substantive examination during the Grand Opening period. That said, it is recommended to re-file earlier or as soon as possible once soft opening commences to buffer time to address any deficiencies or objections that may be issued.”

Gwendolyn Cardno, the chargé d’affaires at the United States Embassy in Naypyidaw, speaking at the opening of the Myanmar Intellectual Property Office on October 1, 2020, lauded Myanmar for modernizing its intellectual property system.

“A modern trademark system will provide protection against counterfeiters,” she said. “That protection is important to the many Myanmar and international businesses who have invested in developing brands of quality and credibility. It will also encourage growth of new businesses.”

At the same time, Cardno encouraged Myanmar to look not just at multinational corporations and global brands to populate its intellectual property ecosystem. “A strong intellectual property system, especially for trademarks, is not just about large domestic and foreign well-known brands, it is also about growing distinctive, innovative small businesses in Myanmar, some of which, such as Myanmar’s uniquely patterned textile and handicrafts, could benefit from registration as businesses look to go global one day.”

See the October 2020 issue of Asia IP for more on Myanmar’s new trademark law.

Excel V. Dyquiangco and Gregory Glass