Trademark Law: the long wait may soon be over

Myanmar is emerging from a long period of international isolation. With the recent relaxing of sanctions against the country, Myanmar is taking steps to rejoin the international community, and this includes legal reform relating to intellectual property. After joining the World Trade Organisation in 1994 and becoming an ASEAN member in 1997, Myanmar has implemented provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights and the ASEAN Framework Agreement on Intellectual Property Co-operation.

Within this framework, Myanmar has shown a commitment to providing protection for IP rights. At present, there are no specific IP laws in Myanmar, but this is about to change. The country’s Ministry of Science and Technology, Ministry of Commerce and Office of the Attorney General have collaborated with the World Intellectual Property Organisation to begin drafting its IP laws. Myanmar’s Trademark Law is now being drafted and reviewed, and is due to take effect by the end of 2013, making it likely to be the first IP law established in the country. The Myanmar Intellectual Property Office (MIPO) will be set up as the responsible government body, and it will examine and register applications for trademark registration.

The 10th draft of the Trademark Law, which remains subject to change as it moves through the legislative process, is a significant piece of legislation that introduces key aspects of trademark protection for brand owners, including the following:

• Scope - protection is available for trademarks, service marks, collective marks, certification marks and series of marks.



• Definition - the definition of a 'mark' covers perceptible signs, including sounds, smells and touch, or any visible signs, including pictures, names, domain names, signatures, letters, words, numerals, brands, labels, configurations, trade dress, packaging, colours or combinations of colours.



• Multiple classes - multiple-class applications are allowed.



• First to file - a first-to-file system will be implemented; the person who files the earliest application will have the right to register the mark.



• Priority - to claim the priority right of the date of filing of the first application for registration of a mark in any foreign member state conventions, treaties or agreements, or of international or regional organisations of which Myanmar is a member, an application for trademark registration must be filed in the country within six months of the first filing date.



• Registrability - the mark will not be registrable if it:
  • lacks distinctiveness;
  • is similar or identical to others’ registered marks or well-known registered marks;
  • misleads the public or trade circles;
  • uses the name of plant varieties protected in Myanmar;
  • infringes others’ IP rights;
  • has been filed in bad faith; and
  • is in conflict with other restrictions prescribed by the law.
     
• Oppositions - oppositions can be lodged against trademark applications during the publication period. The deadline to file an opposition is 30 days from the date of the application if the opponent resides inside Myanmar, and 60 days if the opponent resides outside Myanmar.



• Appeal - any aggrieved person wishing to make an appeal against the registrar’s decision is entitled to file an appeal with the Director General of MIPO, with further appeals being made to the responsible ministry or the Supreme Court.



• Term - the term of registration for trademarks is 10 years from the filing date of the application for registration, and the protection is renewable every 10 years. A grace period of six months from the expiry date can be requested, but will result in the payment of late fees. Applications for renewal of trademark registrations must be filed at least six months prior to the expiry date.



• Exclusive rights - the owner of a registered mark shall have the exclusive right, first, to prohibit and prevent a third party from using identical or similar marks for the same or similar goods or services in the course of trade where confusion may arise among the public. In case of use of an identical symbol or sign for the same goods or services, confusion shall be presumed. Second, a trademark owner has the right to file a criminal and/or civil action against an alleged infringer.



• Good faith - the owner of a registered mark shall not be entitled to prohibit a third party from using the mark in good faith for industrial or commercial purposes in the following ways:
  • the owner’s name or address;
  • indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services;
  • indications in respect of the intended purpose of accessories or spare parts; and
  • the Ministry of Health may take measures to limit the use of marks for the purpose of facilitating the prescription of, and the access to, generic pharmaceutical products and medical devices, or for the purpose of discouraging the public consumption of goods that are deemed to be prejudicial to health, provided that such measures do not unreasonably cause detriment to the ability of the marks in question to distinguish the goods of one undertaking from those of another.
     
• Licensing - trademark licensing agreements must be recorded with the MIPO. After the registrar has examined the application for the recordal of a licensing agreement, the application will be recorded and published.



• Cancellation - the grounds for full or partial cancellation of a trademark registration are:
  • the registered mark falls under any ground for cancellation set forth in the law;
  • The owner of the registered mark is not entitled to the registration; and
  • The registration has been obtained by fraud, misrepresentation or concealment.
     
• Non-use - cancellation on the ground of non-use is available. The registrar may cancel the registration of a mark if the trademark owner fails to use the mark for three consecutive years, commencing from the date of registration, without any sufficient justification.

Despite the absence of a law governing trademarks, many brand owners have already taken steps to protect their trademark rights under Myanmar’s existing system by relying on the current Registration Act and filing their marks with the Office of the Registration of Deeds. What will happen to these marks after the new law comes into effect? Any trademarks registered before the Trademark Law comes into force - regardless of whether a new application has been filed under the new law - will continue to receive protection for three years from the effective date of the new law. If a new application to register the mark is not filed under the new Trademark Law within three years of its effective date, the protection of the mark under the Registration Act will end.

To continue the protection of a mark registered under the Registration Act, the trademark owner must file an application to register the mark with the MIPO (if the MIPO has already been established at that time) within three years of the effective date of the new Trademark Law. Preliminary examination on absolute grounds will be conducted by the registrar. If the mark is not refused on absolute grounds, a receipt of acknowledgement will be issued. The registrar will then examine whether the receipt has been correctly issued in accordance with the new Trademark Law. If it meets the required criteria, a certificate of registration will be issued; if not, the receipt will be cancelled.

Given the upcoming changes to the law, many brand owners are wondering how best to safeguard their rights in this fast-changing market. As a best practice, trademark owners who have not already done so should immediately seek protection for their marks under the Registration Act by way of recordation of a declaration of ownership. This should be done immediately, without waiting for the new Trademark Law to be enacted. By securing this registration, trademark owners will qualify for trademark rights under the new Trademark Law as soon as it comes into effect. This will ensure strong protection for trademark rights, even when the new system is in the process of being established.

In order to file a declaration of ownership of a mark with the Office of the Registration of Deeds of Myanmar, the following documents are required:

1. the full name, address and nationality of the applicant;
2. a power of attorney, which has been duly certified by a notary public and legalised by the Embassy of Myanmar;
3. a simply signed declaration of ownership;
4. a specimen of the mark; and
5. the list of goods according to the Nice Classification (multiple-class applications are allowed).

There is no substantive examination in this respect and, therefore, the recordation system allows more than one owner to record the ownership of the same mark. This is another reason why genuine trademark owners must hurry to protect their marks in Myanmar. Following the recordation of the declaration of ownership, it is recommended that a cautionary notice of the registered mark be published in a local English newspaper or in a periodical, to remind the public of the mark’s ownership and warn against possible passing off or infringement. Depending on the status of the transition to the new Trademark Law, brand owners can also consider renewing their registration and republishing the cautionary notice every three years.

By establishing their rights under the current system, trademark owners can strengthen their position in Myanmar and ensure a smooth, uninterrupted transition to the new system, once the Trademark Law comes into effect.

Darani Vachanavuttivong, Tilleke & Gibbins, Bangkok