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.
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.
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.
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.
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 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.
Applicant need to prepare the following documents:
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.
This is a new step in the trademark application processing process introduced with the Trademark Law 2019.
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.
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.
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.
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.
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.
Clients can refer to Viet An Law Firm’s services on trademark registration in some countries as follows:
If you need to apply for trademark registration in Myanmar or in other countries, please contact Viet An Law for the most effective support.
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