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Myanmar issues new rules on industrial designs
20 October 2023
On September 29, 2023, the Ministry of Commerce (MOC) issued the Industrial Designs Rules (Rules) in Notification 67/2023, setting up detailed procedures related to filing and registration of industrial designs with Myanmar’s Intellectual Property Department (IPD). The Rules supplement the provisions of the Industrial Design Law, which was enacted in 2019.
The Rules include 20 chapters and 92 rules in total and provide information relating to the forms for filing, appointment of representative, examination, opposition, assignment, licensing, amendment of applicant’s address and name, registration and the like. However, the officials have yet to announce the official forms and the prescribed fees.
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Yuwadee Thean-ngarm, Partner and Director, Tilleke & Gibbins, Yangon
“As with trademark applications, applicants who wish to file an industrial design with the IPD in Myanmar must appoint a local representative with the prescribed official form (ID-2 form) if the applicant resides overseas or the place of business is outside the country,” said Yuwadee Thean-ngarm, a partner and director at Tilleke & Gibbins in Yangon. “The form must also be notarized by a notary public in the applicant’s country of residence. The application can be filed in either Myanmar or English language.”
According to her, the Industrial Design Law and Rules are the very first regulation specifically enacted for protection of industrial design rights in the country. Hence, upon these enactments, holders of industrial designs rights will be entitled to obtain statutory protection under the said law and rules.
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Khn Myo Myo Aye, Senior Associate, Tilleke & Gibbins, Yangon
“Moreover, the Industrial Design Law and Rules recognize the right of priority for foreign creators who have filed an application in a member country of the Paris Convention, or in another World Trade Organization member country,” added Khn Myo Myo Aye, a senior associate at the same firm. “The right of priority can be claimed within six months from the date of the initial application, and the same priority date can be obtained. These are major developments on the landscape for protecting design rights and encouraging both local and foreign creators in the areas of statutory rights and enforcement.”
As the Rules will come into effect only on the day the Industrial Design Law is enforced, the enforcement of the Industrial Design Law and Rules are pending as of today.
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Khin Yadanar Htay, Associate, Tilleke & Gibbins, Yangon
“Regarding the impact on brands, individuals or those involved in industrial designs, we believe any industrial design creator with an industrial design that are domestically and internationally novel will be able to enjoy the full statutory protection of its design rights upon registering the design with the IPD,” said Khin Yadanar Htay, an associate at the same firm.
The protection will be given for five years from the application date, renewable within six months of expiry for a further five years, twice. Protection will be enforced by both civil and criminal action under the Industrial Design Law. Licensing and assignment of industrial design rights in Myanmar will also be subject to the statutory provisions of the Industrial Design Law and Rules.
In addition, Htay advised brand owners and concerned parties to review their design portfolios once the Industrial Design Law and its accompanying regulations come into effect following an official announcement in the future. This will help ensure that all necessary application requirements are in order, enabling the earliest possible filing date for securing design rights protection.
- Excel V. Dyquiangco
