Newsletters
Pending New Trademark Law Makes Immediate Trademark Registration in Myanmar Advisable
1. Introduction
In the context of current growing international interest in the reforming economy of Myanmar and the continuing revision of its antiquated regulatory structure, international brands looking to enter this market must face the issue of how to best protect their valuable trademarks.
Complicating the matter, however, is the fact that Myanmar is poised to shift its trademark protections from its existing fi rst-to-use system based on colonial British statutes and case law to a brand-new fi rst-to-fi le system draft ed in cooperation with the World Intellectual Property Organization (WIPO). Th e change was initially expected to occur in 2013 but is now set for the summer of 2014.
Th is newsletter will explain in brief what these changes mean for foreign companies and investors and alert clients to what should be done before the shift takes place.
2. Signifi cant benefi ts for registering trademarks now under existing regime
Under the new Trademark Law any trademarks registered under the old regime will automatically continue to receive protection during a three-year transition period, which begins from the date the new Trademark Law comes into force. While trademark holders should re-register their trademarks under the new Trademark Law as soon as possible aft er it goes into eff ect, those trademark holders who have already registered their marks under the old regime will receive priority under the new system.
Under the system currently in place trademark holders have traditionally availed themselves of protection under Section 18(f ) of the Registration Act (Direction 13) by creating a “Declaration of Ownership,” which must be registered with the Offi ce of the Registry of Deeds and Assurances. Once a Declaration of Ownership has been registered it is customary for trademark holders to then publish a “Cautionary Notice” of the mark in a Myanmar newspaper of broad circulation.
Perfecting the above procedure establishes prima facie evidence of ownership of the mark, however, actual use of the mark in trade is still required for protection against infringement. Myanmar’s Constitution grants IP rights and refers explicitly to “[i]ntellectual property such as . . . trademarks,” Myanmar’s Penal Code both defi nes trademark (Section 478 & 479) and provides penalties against infringement (Section 482), while Myanmar case law off ers remedies for civil actions. Indeed, there are several recent cases where Myanmar Courts have provided remedies for major international brands such as Kentucky Fried Chicken (“KFC”), Pizza Hut, HBO, Marriot, and Dr. Scholl’s. Th erefore, while better protection is expected under the new law, the current regime is not without remedies for trademark infringement.