IP Protection in Myanmar (Jun, 2024)

The Trademark Law of 2019, effective since April 1, 2023, under Notification No. 82/2023 by the Republic of the Union of Myanmar, State Administration Council, stands as Myanmar’s inaugural trademark legislation (the “Trademark Law 2019”).

The Trademark Law 2019 defines a trademark as a sign, or a combination of signs, which distinguishes the goods or services of one enterprise from those of another. The Trademark Law 2019 permits the registration of trademarks, service marks, collective marks, and certification marks within the country

Previously, safeguarding trademarks in Myanmar necessitated submission of a Declaration of Ownership to the Registration of Deeds Office and publishing a cautionary notice in a local newspaper.

Pursuant to the Trademark Law 2019, trademark registration is now managed by the Department of Intellectual Property under the Ministry of Commerce. Utilizing a “first-to-file” system, applicants are not obligated to demonstrate prior usage of a  mark when submitting an application. Procedurally, applications to register a trademark can be lodged directly by the mark owner or an authorized agent meeting (being a person meeting specific criteria, including Myanmar nationality, possession of a WIPO file user account, and completion of a representative training course). If filed by an agent, the power of attorney (TM-2 form) must be notarized in their country of residence. Additionally, multiple marks can be consolidated under one power of attorney. Trademark registrations hold validity for a decade (10 years) from the filing date and can be renewed subsequently.

Despite not being a signatory, Myanmar adheres to the guidelines of the Nice Agreement when categorizing goods and services¹. Applicants are required to specify the goods and/or services that they currently use or intend to use the mark for, adhering to the “Nice Classification” system. Presently, applicants are unable to utilize the Madrid System for International Trademark Registration for marks from Myanmar or foreign countries, given Myanmar’s non-accession to the Madrid Protocol.

The Trademark Law 2019 defines a trademark as a sign, or a combination of signs, which distinguishes the goods or services of one enterprise from those of another. The Trademark Law 2019 permits the registration of trademarks, service marks, collective marks, and certification marks within the country.

The owner of a registered mark in Myanmar is entitled to a set of exclusive rights including but not limited to: (i) the Exclusive Right to Prevent Misleading Use; (ii) the Right to Pursue Legal Action against Infringers; and (iii) the Right to Prevent Use of Similar Marks for Different Goods or Services1. However, in order to ensure a balance between the trademark owners’ rights and the legitimate uses in the market, the Trademark Law 2019 also provides for some exceptions. Trademark owners possess the authority to prevent infringement of their mark through three primaries enforcements venues:

i. Initiating a lawsuit in intellectual property courts for provisional measures of criminal or civil case;
ii. Petitioning customs authorities to suspend the transport of infringing goods into the country; and
iii. Pursuing criminal prosecution and/or fines against offenders.

i. Three-dimensional features such as the shape of a product;
ii. Two-dimensional features such as ornamentation, patterns, lines, or color of a product; and/or
iii. Combination of these things².

If certain conditions are met, these aspects may be protected as industrial design rights. Industrial design rights entitle the right holder to hold commercial production, important, and sale of products with the protected design. However, such protection does not cover the technical or functional aspects of a product.

Pursuant to Notification No. 217/2023 issued by the State Administration Council (SAC) of the Republic of the Union of Myanmar, the Industrial Design Law 2019 came into force on October 3, 2023. Under  the Myanmar Industrial Design Law, 2019, an industrial design must be “new” and “free from imitation”, in order to be registerable³.

In the past, an industrial design could be registered under the Registration Act of 1908 by registering a Declaration of Ownership in respect of it. Under the new system, as with trademarks, industrial designs are registered with the Department of Intellectual Property under the Ministry of Commerce. In practice, the registration procedures are similar. An inventor of an  industrial design, his legal heir, or his legal transferee may apply for the registration of said industrial design. If an industrial design is created by more than one person, said persons have the right to jointly apply for the registration of such an industrial design.

Myanmar follows the “Locarno” classification, established by the Locarno Agreement of 1968. One application can cover several designs, if they are the designs of the products under the same Locarno classification.

An applicant who has submitted an application for the registration of the industrial design in a State that is party to the Paris Convention or the World Trade Organization Agreement, or a successor to such an applicant, shall, when filing an application to the Department of the same industrial design, enjoy the right of priority for six months from the filing date of the first application. Moreover, where the applicant has disclosed the industrial design at an international trade exhibition organized or recognized by the relevant government in a Member State of the Paris Convention or the World Trade Organization, he may claim a right of priority from the date of the first display of such industrial design in the exhibition if he files the application within a period of six months from that date.

The term of the registered industrial design is valid 5 years from the filing date of the application and may be renewed for not more than two consecutive periods of five years each (i.e., for a maximum aggregate period of up to 15 years).

The enforcement of protection maybe carried out via civil proceedings initiated by the industrial design’s owner(s), their rightful successors, or assignees when deemed necessary. Additionally, the legislation outlines various criminal infractions linked to deceitful or dishonest registration, as well as the unauthorized use of an industrial design. These offenses can result in imprisonment for a maximum of one year and/or fines reaching MMK 2,000,000 (approximately USD 1,300).

IV. COPYRIGHT

Myanmar’s Copyright Law of 2019 (“Copyright Law”), which came into force on October 31, 2023, under Notification No. 218/2023 issued on October 18, 2023.  The Copyright Law marked a significant update to the legal framework governing intellectual property rights in Myanmar country. This law repealed the outdated Myanmar Copyright Act of 1914, reflecting Myanmar’s commitment to modernizing its legal infrastructure to align it with international standards and practices.

In addition to domestic protection, the Copyright Law extends coverage to foreign works, provided that they are published in Myanmar within 30 days of creation. This provision represents a significant departure from the previous legal framework, which did not recognize or protect foreign copyright works. By embracing international norms, Myanmar aims to facilitate cross-border cultural exchange and foster creativity within its borders.

Furthermore, the Copyright Law introduces provisions for collaborative efforts with Collective Management Organizations (CMOs) and customs recordation intended to combat counterfeiting and piracy. These measures underscore Myanmar’s commitment to protecting the rights of creators and promoting a conducive environment for innovation and creativity.

In terms of duration, the Copyright Law aligns protection terms with international standards, ensuring that authors and creators are fairly compensated for their contributions. While the standard term of copyright protection is the author’s lifetime plus 50 years after death, specific categories of works, such as photographic and applied art pieces, are granted shorter protection periods to balance the interests of creators and the public.

Moreover, the owner of related rights such as the performers, producers of phonogram and broadcasting organization can enjoy protection for 50 years from their creation, whereas broadcasts are protected for 20 years from the year following their broadcast. Moral rights are protected for the duration of the author’s life and an unlimited period after their death. The enactment of the Copyright Law represents a significant step forward for Myanmar in establishing a robust legal framework for intellectual property rights. By modernizing its copyright laws and embracing international best practices, Myanmar seeks to promote cultural diversity, stimulate creativity, and foster economic growth in the digital age.

In Myanmar, the Patents and Designs Emergency Provisions Act 1946 was enacted in the past as the relevant law on patents and utility models. In practice, this piece of legislation has not proved to be effective.

Until 2019, the only way to register a patent was by submitting a declaration as the owner to the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department in accordance with Section 18(f) of the Registration Act 1908 and Registration Direction 13 of the Inspector General of Registration within the land registration office.

On March 11, 2019, Patent Law was enacted per Pyidaungsu Hluttaw Law No. 7/2019, which is the first piece of statutory legislation that specifically addresses the protection of patents in Myanmar. The new law establishes a patent registration system that includes procedures that are in line with international standards applicable to patent protection globally.  The law  adopts a first-file system.

For a patent to be registrable under the Patent Law 2019, an invention must be novel, have involved an inventive step, and be industrially utilizable⁴. Pharmaceutical and pharmaceutical product patents are specified as non-protectable inventions until January 1, 2033, unless the government specifies otherwise. Methods, chemical substances, etc. are excluded from the subject matter of the utility model. An inventor or his or her successor in title has the right to the patent. As for joint inventions, it is provided that an application must be filed jointly⁵. With respect to inventions by employees, it is stipulated that the employee shall have the right to receive remuneration based on the profit gained by working on the said invention.

A right of priority under the Patent Cooperation Treaty (“PCT”) or the Paris Convention for Industrial Property can be sought in Myanmar within one year from the date of patent application under the PCT. The effect of a patent right does not extend to non-commercial private use or experimental research. A patentee may transfer, assign, and license the patent right and may file a civil lawsuit.

Once the registration of the patent is granted, then it will be protected for 20 years from the Date of Filing. Thereafter, the patent is to be maintained yearly and the applicant must pay an annual fee to the IP Department regularly.

At present, no timeline has been set out for the enforcement of Patent Law 2019. Upon its implementation, the suite of patent law will establish a systematic and thorough patent system, aligning Myanmar more closely with global standards and legal structures.

VI. UTILITY MODEL 

Under Patent Law 2019, minor inventions, also known as “utility models”, are technical creations that can be the new form of a product, the new structure of the parts of a product, or a part of a product that increases its utility or performance⁶.

These inventions can be novel and used in industrial enterprises. However, they are not eligible for minor invention protection for phases of a working process; chemical, pharmaceutical, biological, or mineral substances or compounds, or other substances or compounds; objects prohibited from patent protection under the law; and sculptures, architecture, or natural ornaments.

The description of a minor invention shall be complete and clear so that a person with ordinary skill in the art in the respective technical field can continue making said minor invention, and the description must especially include how the minor invention improves the utility and performance of an object.

The application process is the same with a patent, but for an identical invention, an applicant may not submit a minor invention patent application and a patent application at the same time or consecutively. The term of protection shall be 10 years from the filing date of the utility model application.

VII. SUMMARY OF IP PROTECTION IN MYANMAR

This note is intended to be general guidance only and it is not intended (nor should it be construed as constituting) legal advice.  Readers requiring legal advice regarding the legal issues referred to in this note are advised to obtain specific legal advice tailored to their individual circumstances and requirements.  BNG Legal would be delighted to assist with such legal advice and welcomes new enquiries from existing and new clients with an interest in the topics covered by this note.

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1 Section 2(c) of Trademark Registration Rules, Notification No.1/ 2023

2 https://www.wipo.int/designs/en/ accessed on 23 April 2024

3 Section 2(c) of Trademark Registration Rules, Notification No.1/ 2023

4 Section 13 of Patent Law of 2019 (An invention, for which a patent right application has been made for, is considered to include an inventive step if an expert in a relevant technical field does not have the capability to easily understand it. Industrial applicability means that said invention is able to be produced or used in an industrial enterprise. The expression ‘industrial enterprise’ broadly includes socioeconomic work that precede manufacturing and service work, especially handicraft, agriculture, livestock breeding, fisheries, trade and service enterprises.)

5​ Section 13 of Patent Law of 2019 (An invention

6 Section 2 (l) of Patent Law of 2019