Trademark registration procedure in Myanmar

Myanmar is one of the developing countries in Southeast Asia. With steady development over the past years, this country has attracted a lot of foreign investment. However, many businesses have had their trademarks illegally used and caused a lot of trouble when entering this market. As a result, before starting an investment in Myanmar, businesses need to carefully research the legal regulations to save time and money. In the article below, Viet An Law Firm will answer customers’ questions about the trademark registration procedure in Myanmar.

Legal basis

Myanmar Trademark Law 2019.

Overview about Myanmar

Myanmar is a country with the most festivals in the world. The festivals here take place all year round but mainly focus on March and April, which are the periods when farmers take a break from their work. The festivals here are extremely unique and interesting, attracting many people to visit here. Besides its strength in tourism, Myanmar is also one of the markets that attracts individuals and businesses from countries in the region in general and Vietnam in particular.

Classification of goods and services for trademark registration in Myanmar

When registering trademark registration in Myanmar, you must register the class of goods and services you want for the trademark registration. Classifying classes of goods and services when registering a trademark plays an important role in determining the scope of trademark registration. Goods and services in Myanmar are grouped based on the Nice International Classification Of Goods And Services.

Signs that a trademark is ineligible for registration in Myanmar

• Signs that overlap with another person’s trademark registered for the same goods or services or in the same good or service category;
• Signs that are deceptive or confusingly similar to another person’s registered trademark;
• Signs similar to coats of arms or badges, orders, medals, flags, or images of any country, city, town, township, place, trade union organization, legal entity, organization, or individual;
• Signs with prohibited content such as sensitive social issues or contrary to law and social ethics.

Principles of trademark registration in Myanmar

Myanmar currently applies for trademark registration under the “first to use” principle. Accordingly, the time of registration is the only basis to decide to which entity the exclusive right to use the trademark belongs. This is an update of trademark registration principles in Myanmar from 2019. Previously, Myanmar was similar to US law in registering trademarks according to the principle of prior use and was established through a Declaration of Trademark Use. To meet registration requirements when joining international treaties on trademark registration such as the Paris Convention and the Madrid Protocol, the changes to Myanmar trademark law are reasonable and in harmony with the current trademark registration systems around the world.

Trademark registration procedure in Myanmar

Step 1: Select a trademark sample and search for the trademark

Choosing a trademark sample is very important. After designing and classifying goods and services for the trademark, the applicant should search for the registration of the trademark to ensure the effectiveness of the registration procedure. Although this is not a mandatory procedure, if not done, the applicant may face a high risk of having the application refused, causing costs and money for the applicant.

Step 2: Submit the trademark registration application

Submit the trademark registration application to the Trademark Registration Department of Myanmar (Intellectual Property Department (IPD)) under the Ministry of Commerce of Myanmar.

Registration dossier includes:

• Trademark registration declaration, including basic information about the applicant’s name, address, contact information, and intellectual property representative information;
• List of goods/services (classified according to the Nice International Classification of Trademark Registration);
• 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 the Intellectual Property Department to allow the representative of the applicant’s trademark in Myanmar to carry out this procedure;
• Declaration of use with attached sample trademark and products list;
• Other documents (if necessary).

The current popular form of application is through IPD’s E-filing online reception system. The applicant will pay the trademark registration fee immediately upon applying.

Note:

• In case the applicant requests priority rights, it is necessary to attach documents proving that the applicant is eligible for priority rights;
• In case identical or similar trademarks are filed by different applicants with different filing dates, the trademark application with the earliest filing date will be granted a protection title if it meets the registration criteria.

Step 3: Formality examination

• This is a new step in the trademark registration application process introduced with the Trademark Law 2019. IPD will check the validity of the documents in the dependent trademark registration dossier, in necessary cases. Additional amendments need to be notified to dependents for supplementation within the most reasonable and acceptable time limit.
• A valid expression application will be registered on the Industrial Property report and receive registration objections from third parties. Procedures for opposing the application are carried out within 60 days from the date of publication of the trademark and a response is received within 30 days. Thus, if there is a procedure to oppose the application, the verification of the application will take about 90 days so the procedure does not have an objection.

Step 4: Substantive examination of the application

• IPD conducts an assessment of the absolute basis (distinctiveness of the trademark), or whether it is in the case of not being able to register the trademark to consider the ability of the trademark to be registered according to the provisions of the Trademark Law in 2019.
• The objection to the application from a third party is the basis for IPD to continue to conduct a deeper substantive examination on a relative basis.

Step 5: Decision for granting a trademark registration certificate

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

The estimated time for IPD to examine a trademark application (excluding further substantive examination if any objections are filed) is approximately 12 to 18 months.

Step 6: Grant of registration certificate

Once the trademark has been approved for registration, customers will receive a Notice of issuance of the Trademark Registration Certificate and then the original Trademark Registration Certificate.

Notes when registering, using, and managing trademarks in Myanmar

• Explore the possibility of trademark registration, and consider whether the trademark violates the prohibitions of Myanmar trademark law;
• Select and classify goods/services classes for application submission;
• Search and provide information and data on trademark use and registration in Myanmar;
• Choose a trademark sample for registering;
• Prepare documents according to the form issued by Myanmar. Pay attention to the brand description, classifying, and symbol code;
• Monitor the status and validity of trademark registration certificates in Myanmar to pay renewal fees promptly;
• Negotiate, draft, examination, and register trademark transfer rights or ownership contracts in Myanmar;
• Monitor actual use of trademarks, and detect and handle rights violations in Myanmar.

Related questions

How long does the trademark registration last?

The term of trademark registration is 10 years from the date of application, renewable every subsequent 10 years. Renewals must be submitted 6 months before the effective date of the trademark and a renewal fee must be paid. Late renewal within 6 months from the expiration date.

Can trademarks that include special characters in foreign languages such as Chinese, Japanese, English, or Myanmar be registered?

• In fact, a trademark (any recognizable sign such as names, letters, numbers, descriptive structures, color combinations, visible marks, and any combination of all signs capable of distinguishing goods and services) can all be registered.
• For marks containing Chinese or Japanese characters, transcription and meaning of foreign characters are required. To receive a higher rate of registration, applicants should consider filing a trademark registration application in Myanmar phonetic transcription.

Services for trademark registration in Myanmar of Viet An Law

• Search and notify customers in writing of the results of the trademark search in Myanmar;
• Consulting on issues related to filing trademark applications.
• Monitor the registration application process and respond to the registration agency, regularly update the status of the application owner;
• Consulting on trademark use after granting;
• Prepare documents to apply for an extension of the registration certificate.

Clients who have related questions with trademark registration documents and procedures in Myanmar, please contact Viet An Law Firm for the best support.