Trademark registration in Myanmar

Currently, the Myanmar market is increasingly attracting foreign investors, including Vietnamese investors. To increase competitiveness and protect their products and goods from being infringed by other business entities, Vietnamese businesses should register trademarks for their goods and services in Myanmar.

Legal basis

• Myanmar Trademark Law 2019.

Trademark protection in Myanmar

The Myanmar Trademark Law of 2019 has created a breakthrough in an effective and comprehensive trademark protection mechanism for trademark owners inside and outside the country.

Protection principles

Myanmar currently applies trademark protection under the “first-to-file” mechanism. Accordingly, the time of registration is the only basis to decide to which entity the exclusive right to use the trademark belongs. This regulation is different from the previous one, Myanmar applies protection based on the “first use” principle similar to the United States. Before 2019, in Myanmar, trademark registration was not required because trademarks could be protected through use. The state only encourages trademark registration. After registering a trademark, publishing a notice of industrial property rights to the trademark in the press in Myanmar is considered evidence of use of the trademark. This evidence is admissible in civil and criminal trials against third parties for trademark infringement.

Protection based on the automatic mechanism and the principle of first use before 2019 in Myanmar has caused significant consequences in creating a solid legal basis to protect trademark rights for trademark owners in this country, causing anxiety investment environment for foreign investors. Therefore, the Trademark Law 2019 in Myanmar is considered a new step forward in the trademark protection mechanism here. Trademark owners today need to register their trademarks as soon as possible to protect their legal rights and interests.

Protection mechanism

Myanmar is also currently a member of the Paris Convention, so claiming priority rights is applied in Myanmar similar to Vietnam within 6 months from the date of filing the basic application in another member country.

However, Myanmar is not currently a member of the Madrid system. Therefore, trademark protection here is only done through direct filing at the Myanmar Intellectual Property Department.

Infringement of trademark rights

In case other organizations/individuals are discovered using signs that are confusingly similar and/or identical to the above registered trademark for products that are similar and/or identical to products under the scope of protection in the Trademark Registration Certificate, the trademark owner has the right to request Myanmar’s enforcement agencies to handle infringement of trademark rights.

Trademark protection period

Trademark registrations under the new law will be valid for a period of 10 years from the date of filing, renewable every 10 years. A trademark may lapse if not used within 3 years from the date of registration.

Trademark registration documents in Myanmar

Applicant need to prepare the following documents:

• Trademark registration declaration, including basic information about the applicant’s name, address, contact information, and intellectual property representative information;
• The trademark model that needs protection can be words, logos, images or a combination of images and words; accompanied by a complete and clear description of the trademark sample.
• Classes of goods/services bearing the mark;
• Declaration of trademark use in Myanmar;
• Power of Attorney to carry out registration procedures. This document is required for foreign applicants. According to the latest regulations, the application requires a notarized copy of the Appointment of Representative form, which is a newly introduced form other than the Power of Attorney to IPD to allow the representative of the applicant’s trademark in Myanmar to perform this procedure.
• Other documents (if any).

Note:

• A trademark registration application in Myanmar can be used to register a Trademark for one or more different classes of goods/services;
• Immediately after completing the trademark registration, the Trademark owner needs to issue a Notice of Recommendation regarding his Trademark in the Myanmar press. Although this is not mandatory, it helps the public know the trademark owner’s ownership rights. In addition, another important effect is that it helps warn intending parties not to violate the trademark rights of the Trademark owner.

The procedure of trademark registration in Myanmar

Step 1: Submit the registration application

Submit a trademark registration application at the Trademark Registration Office – Intellectual Property Department (IDP) under the Ministry of Commerce of Myanmar. The current popular form of application is through IDP’s online E-filling system. The applicant will pay the trademark registration fee immediately upon submitting the application.

Step 2: Formality examination of application

This is a new step in the trademark application processing process introduced with the Trademark Law 2019.

Step 3: Announce the application

A formally valid application will be published in the Industrial Property Official Gazette to continue examining the absolute basis (distinctiveness of the mark) and receive objections to the application from third parties.

Objections to the application shall be received within 60 days from the date of publication. Objections can be based on relative reasons for refusal (e.g. the mark is identical or similar to an existing mark, unauthorized application, and bad faith). The applicant’s response must be made within 30 days of receipt of the notice of objection.

Step 4: Substantial examination of the application

The objection to the application from a third party is the basis for IDP to continue to conduct a deeper substantive examination on a relative basis.

Step 5: Granting a trademark registration certificate

If there are no objections to the registration or if the objections are resolved, the trademark application will be issued with a registration certificate. The applicant will pay the registration fee at this stage to receive a trademark registration certificate.

Thus, the estimated time for IPD to examine a trademark application (not including the time for further substantive examination if any objections are filed) is about 12 to 18 months. However, in reality, this time may be longer due to delays and backlogs in the appraisal process of a large number of applications while the need for human resources for appraisers has not been met in Myanmar.

Trademark registration fees in Myanmar

In early April 2023, through Notice No. 1/2023, the Myanmar Intellectual Property Department (approved by the Ministry of Commerce) issued a new notice on state fees when registering trademarks.

Accordingly:

• Trademark application fee: 150,000 Kyat (about 72 USD).
• Request to correct errors in application: 100,000 Kyat (about 48 USD).
• Split application request: 100,000 Kyat (about 48 USD).
• Request for a certified copy of the registration certificate: 50,000 Kyat (about 24 USD).

Note: The above fee does not include the fee for using industrial property representation services in Myanmar. This is a mandatory procedure for foreign applicants to apply directly at the Myanmar Intellectual Property Department.

In case of a request to withdraw the application, the applicant will not be charged any additional fee but will not be refunded the fee paid to the Intellectual Property Department.

Trademark registration in Myanmar service of Viet An Law Company

Clients can refer to Viet An Law Firm’s services on trademark registration in some countries as follows:

• Carry out the search and notify clients in writing of the results of the trademark search in Myanmar;
• Draft documents and directly submit and monitor the status of trademark registration applications on behalf of trademark owners in Myanmar;
• Notify, advise, and handle shortcomings/rejections from competent State agencies (if any) during the application tracking process;
• Receive official dispatches and certificates and hand them over to clients (if any).

If you need to apply for trademark registration in Myanmar or in other countries, please contact Viet An Law for the most effective support.