An emerging market that is drawing law firms and businesses alike to its shore, Myanmar has ramped up its efforts to protect IP rights. The long-awaited Trademark Law was passed on 30 January 2019, on the back of the Patent and the Industrial Designs Laws and followed closely by the Copyright Law. These four pieces of IP legislation made headlines in the region and practitioners are now eagerly awaiting their implementation and the establishment of administrative structures – the IP Office is expected to open in April 2020 on World IP Day. In anticipation of these transformations, foreign firms have begun to set up a local office since the early 2010s, working alongside local agents that have dominated the legal market for years. These foreign firms are often more actively involved in trademark enforcement, whereas their domestic counterparts prefer to focus their practice on general IP filings. Taking these new developments into account, the WTR 1000 is breaking new ground with a Myanmar chapter, featuring foreign and local firms coexisting in the legal landscape.
Myanmar is Baker McKenzie’s latest foray into the Association of Southeast Asian Nations (ASEAN) region. “Experienced in local IP laws, the team draws on their international network to provide invaluable advice in line with international standards.” Clients – most of them global multinationals from sectors such as consumer goods, technology and pharmaceuticals – have been counting on the firm since 2014 to provide “practical and future-ready solutions”. Unlike local service providers, Baker McKenzie also offers services beyond trademark registration to trademark records keeping and monitoring through a proprietary cloud-based IP management system, as well as assessing trademark infringement and IP licensing aspects of acquisition deals. Senior associate Chadd Concepcion oversees two associates dedicated to IP work, who have undergone rigorous regional training on IP-specific skills. “Experienced in advising on the best course of action for trademark protection, he demonstrates in-depth understanding of the current registration laws and processes. He also provides insights into up-to-date developments in the law and provide commercially practical advice to ensure that the transitions under the new IP law would be smooth.”
Kelvin Chia Partnership
In 1995, before Myanmar had opened to foreign investors, Kelvin Chia Yangon was the first foreign outfit to open an office in Yangon and later a second one in Mandalay. Through its 24 years of experience on the ground, the only Singaporean law firm in WTR 1000’s Myanmar chapter draws upon its connections with commercial side Kelvin Chia Partnership to handle all manner of IP work. Besides filing trademarks for its clients, including a huge local hotel chain, the set possesses deep IP expertise, which extends beyond prosecution to IP commercialisation projects. Thus, it offers a one-stop shop for all legal issues in the ASEAN region, especially in emerging markets such as Vietnam and Indonesia. To keep abreast of its competition, the firm already has an internal system in place ahead of the implementation of local IP laws. Based in Singapore, Esther Rose Nicolas Rances supervises a team of three local lawyers.
Khine Khine U Law Firm
An active filer of trademarks in Myanmar, Khine Khine U Law Firm is led by founder Khine Khine U, who specialises in both trademark and maritime law. Fluent in English and Burmese, she holds a master’s degree in legal aspects of marine affairs from Cardiff University.
Established in 2013, LawPlus is the only Thai law firm to feature in the Myanmar chapter. Besides registering trademarks for multinationals, the well-respected outfit has cancelled infringing trademarks and advised on trademark infringement matters for Japanese companies. Thai companies look to it for trademark filing and enforcement, as well as for corporate and commercial issues. Recently promoted to partner and now in charge in Myanmar, Khin Khin Zaw has been stationed in the local office since it opened. Her previous experience includes not only working for the Thai government, she also had a stint in private practice in Singapore before opening her own practice.
Rouse & Co International
In 2013, Rouse & Co International added Myanmar to its existing arsenal of five offices in the region. Not only is it the first and only international IP firm on the ground, the set enjoys a thorough understanding of the new IP laws, as it helped the Ministry of Science and Technology to draft them and was part of the INTA committee that reviewed them. The side now boasts a staff of six, who manage IP portfolios for over 50 clients and help foreign companies across industries to file trademarks locally. It also carries out non-cancellation actions and enforcement, including a series of actions in Mandalay against unauthorised footwear dealers. In addition, it obtained the first geographical indication registration in the country for champagne. Senior IP lawyer Moe Mynn Thu is an excellent first port of call. He lectured on international law at the University of Yangon from 2005 to 2010, after which he joined Myanmar Brewery Limited as a legal executive. He is currently a member of the IP laws drafting committee.
Tilleke & Gibbins
In line with its vision to provide comprehensive services in the ASEAN region, Tilleke & Gibbins was an early mover to Myanmar and opened its latest branch there in 2013. Of the team of 19 professionals offering the full range of legal services on the ground, five focus exclusively on intellectual property. From market investigations, trademark prosecution to IP commercialisation and enforcement, the firm can handle them all. Most significantly, it actively enforces trademarks in the local market – a rare service even among the regional and domestic outfits featured in this chapter. Backed by Tilleke & Gibbins’ experience in emerging markets, the team handles enforcement matters effortlessly. Over the past year, it has acted on over 15 cases on behalf of multinationals – for example, it substantially reduced the number of counterfeit and imitation products for a client, stopped an infringer from using another client’s trademark and selling infringing products – difficult successes to obtain in a developing jurisdiction, which required unconventional approaches such as “educate first”. At the same time, it is managing more than 3,800 active cases for blue-chip clients such as Amorepacific Corporation, Bayer Intellectual Property GmbH and Pfizer. The firm also boasts extremely strong ties with local government officials, regularly provides training on intellectual property and organises IP seminars for local university students. After serving in the Bangkok office for a decade, Thai-qualified lawyer Yuwadee Thean-ngarm has been directing the Myanmar outpost since it opened. As well as dealing with IP matters, she helps clients seeking to enter the local market and often works closely with Malaysian-qualified lawyer Sher Hann Chua, who splits her time between the Yangon and Bangkok – the pair are a force to be reckoned with. “They work hard to understand our business and are flexible with our needs. Aside from her practical and tenacious problem-solving ability, Sher Hann communicates very clearly by walking us through issues. She is always very responsive and provides practical advice.”
Tin Ohnmar Tun Law Office
Despite its focus on maritime law, Tin Ohnmar Tun Law Office is a favourite among foreign clients for its IP expertise. With a compact but experienced team of local attorneys, the firm has been filing trademarks in Myanmar for over two decades and enforcing them on behalf of well-known brands such as Louis Vuitton, British American Tobacco and Colgate Palmolive, for more than 15 years. Affectionately known as ‘Dr Tin’, founder Tin Ohnmar Tun has a high profile in the domestic legal market – she was president of the ASEAN IPA from 2013 to 2015, during which she collaborated closely with the government on the drafting the IP laws. Fluent in English and Burmese, she commands high respect for acting as a bridge between local and foreign practitioners at INTA events.
Not only is it the only Japanese law firm featured in this chapter, TMI Associates is the first Japanese law firm to open an office in Myanmar. The side brought its top-notch IP expertise and global standard of service to the country in 2012 to assist its blue-chip Japanese clientele from a variety of industries. Whether it is trademark filing or corporate law, this outfit has the necessary expertise to support its expansion into this emerging market. Through close collaboration with the IP team based in the Tokyo headquarters, local lawyers have registered over 100 trademarks for its clients and also advised on commercial cases involving intellectual property. Fumiaki Kai is the key contact on the ground. He was heavily involved in publishing an English and Japanese translation of Myanmar’s new IP laws with the Japan International Cooperation Agency. Among his team, he counts Aung Htin Kyaw and The Ei Shwe Zin – the former is in charge of all Myanmar-related trademark registration cases, while the latter is one of a handful of Myanmar-qualified lawyers wielding a diploma in intellectual property from Yangon University.
U Myint Lwin Law Office
Founded in 1994, U Myint Lwin Law Office is recognised for its expertise catering to domestic and international clients, including blue-chip multinationals such as Google and GlaxoSmithKline. It also provides services in legal areas such as maritime law, foreign investment and corporate matters. Founder U Myint Lwin holds a diploma in legal aspects of marine affairs from Cardiff University. A regular face at international conferences, Myint Lwin has a background in civil and criminal litigation, which he applies to IP registration and enforcement. Since he was elected to Myanmar Parliament in 2015, he has been actively involved in advocating for the new IP laws.
U Nyunt Tin Associates
Founded by U Nyunt Tin, the eponymous law firm has been active in the domestic legal field for more than 50 years, dispensing advice on intellectual property, investment, corporate, infrastructure, technology and regulatory affairs. Not only is it the first law firm to transform itself from a traditional to modern information and communications technology-based organisation, it is the first Burmese outfit to open an office in Thailand. Through an extensive network of foreign associates, it handles trademark matters for well-known multinationals, including Apple, Lenovo, Samsung, Toyota and Coca-Cola. On the rare occasion that contentious trademark matters arise, it confidently leads the negotiation and mediation process. Aye Aye Khaing oversees the side’s trademark operation team of seven. Armed with a postgraduate diploma in business law from Yangon University, she has over 15 years of experience in protecting IP rights for foreign clients, including handling foreign client relations, advising on trademark filing, registration and cautionary notices in Myanmar.
- Sher Hann Chua - Tilleke & Gibbins
- Chadd Concepcion - Baker McKenzie
- Aye Aye Khaing - U Nyunt Tin Associates
- U Myint Lwin - U Myint Lwin Law Office
- Esther Rose Nicolas Rances - Kelvin Chia Partnership
- Yuwadee Thean-ngarm - Tilleke & Gibbins
- Moe Mynn Thu - Rouse & Co International
- Tin Ohnmar Tun - Tin Ohnmar Tun Law Office
- Khine U - Khine Khine U Law Firm
- Khin Khin Zaw - LawPlus Ltd