We provide trademark analysis services for clients seeking to protect their trademarks in Myanmar. All our trademark reports are accompanied by a trademark opinion that analyzes the possibility of registering the client’s trademark. Our systematic trademark methodology and expertise in trademark law enable us to provide value-added Trademark analysis reports.
In April 2023, Myanmar adopts substantial changes introducing the TM-2 Form (Appointment of Representative), the Schedule of Official Fees, the Trademark Rules, and “Phase II” of the trial period of the new trademark registration system. United & United can file the applications in Myanmar at the most competitive price.
In particular, the Trademark Rules were published by the Ministry of Commerce (MOC) on March 31, 2023, in conjunction with the Trademark Law 2019, which took effect on April 1, 2023. On April 1, 2023, the formal fee schedule for trademark applications was finalized and published.
The Myanmar Intellectual Property Department (MIPD) announced that “Phase II” of the soft opening phase would begin on April 1, 2023.
TRADEMARK LAW IN MYANMAR
On January 30, 2019, Myanmar passed a new trademark law. The country’s previous trademark registration and protection laws were updated under this new Trademark Law. Highlights of the Law’s principal tenets and the administrative entities it creates are provided below:
- The new Law created the Myanmar Intellectual Property Office (MIPO) under the Ministry of Commerce to manage trademark registration. The MIPO will have the power to review trademarks, publish them in a journal, and manage opposition processes.
- The Central Intellectual Property Committee (CIPC) and the Intellectual Property Agency (IPA) are to be established following the Law for the execution and management of IP-related policies.
- The former system’s trademark was replaced by the new law to replace the previous “first-to-use” system for trademark registration and protection with a “first-to-file” system.
- The terms “service marks,” “collective marks,” “certification marks,” “trading names,” etc. are recognized by the new Law. Additionally, it safeguards “geographical indications” and “famous marks” (also known as well-known marks).
- The new law also includes procedures for “non-use” registration revocation. Additionally, it allows for the non-registrability of a trademark to render it invalid.
- Ten years from the application filing date is the duration of registration under the new Law.
The journey from Implementation of New Trademark Law in 2019 to Amendment in April 2023
Implementation of the new Trademark Law in Myanmar: The “soft opening period”, which began on 1 October 2020, was announced by the MOC in Order No. 63/2020 (“Order“). The soft opening period was restricted only to trademarks that have been registered via Declarations of Ownership filed with the Office of the Registration of Deeds (ORD) and/or trademarks that have enjoyed use in Myanmar (for instance, evidenced by the publication of a cautionary notice) (“Registered/Used Marks“), whereas all other trademarks (“New Marks“) may only be filed after the grand opening.
Phase I (1 October 2020 – 31 March 2023): During Phase 1 of the soft opening period, only Registered/Used Marks are eligible for filing. All trademark applications filed during this period will be given a “common filing date”, i.e. the first day of the grand opening (to be announced).
Given that the Trademark Rules were still in the draft stage during Phase I, applicants were unable to submit the TM-2 Form (Appointment of Representative) and official fee payment for new trademark applications.
Phase II ( 26th October 2023): We are presently in Phase II. During Phase II of the “soft opening period”, the new trademark registration system will still accommodate Registered/Used Marks secured prior to 1 April 2023.
All trademark applications filed during Phase II will still be given a “common filing date”, i.e. the first day of the grand opening (to be announced).
The difference between Phase I and Phase II applications is this:
- It is mandatory to submit the notarised TM-2 Form (Appointment of Representative) and the official fee payment at the time of filing the Phase II application under the new electronic system.
- Phase II is anticipated to end on 25 April 2023, i.e. a day before the anticipated date of the grand opening of the new trademark registration system.
- Phase III (anticipated date: 26 April 2023): The grand opening of the new trademark registration system will take place during Phase III. During this phase, New Marks will be eligible for filing under the new electronic trademark system. All applications of New Marks will bear the filing dates of the applications, i.e. the date on which the MIPD receives the complete application and stipulated official fee.
Power of attorney/appointment of a representative
On 29 March 2023, MIPD posted an announcement regarding the TM-2 Form (Appointment of Representative) on its official website.
In essence, a foreign applicant (i.e. a non-Burmese entity) for multiple trademark applications may submit a single notarised TM-2 Form (Appointment of Representative), provided that a list of applications is annexed to the notarised TM-2 Form (Appointment of Representative).
The MIPD also indicated that the notarised TM-2 Form must be submitted prior to the first day of the grand opening of the new trademark registration system which is yet to be announced.