On the homestretch: Trademarks Law passes National Assembly

Continuing our intellectual property reform coverage, especially our comprehensive analysis of the Trademarks Bill (Read here) Myanmar recently saw the passing of the Trademarks Law by the National Assembly in a move which brings the long-awaited agenda intellectual property reform in Myanmar closer to reality. What is left now is for the lower house to finalize and approve the Trademarks Law and for the President to sign it into force.

Once enacted, the Trademarks Law will bring about a full suite of substantive and structural changes. These changes include the following:

1. Centralized Intellectual Property Office

A dedicated Intellectual Property Office (“IPO”) will administer the trademarks registration system. It is anticipated that the relevant rules regarding filing, opposition and registration will be enacted in subsequent Trademark Rules.

2. The definition of a trademark under the Trademarks Law

Once enacted, the Trademarks Law will define a trademark as a two-tiered process; firstly, it must be “seeable by one’s own eyes” and secondly, it must be used to “distinguish goods or services dealt with by a person from those dealt with by another”. As discussed in the October 2017 edition of insights, this narrow definition of a trademark might be problematic for the registration of unconventional trademarks. However, we cannot discount the possibility that the Lower House may change the definition between now and enactment.

3. First to file

The Trademarks Law will implement a first-to-file system for trademark registration. This could spell trouble for businesses who fail to act quickly from day 1 of enactment to register their trademarks.

4. Trademark protection period

The Trademarks Law will allow a period of protection of ten (10) years This period may be extended by another ten (10) years “each time” the protection period expires, thereby allowing for perpetual proprietary ownership over your mark replacing the comparatively weaker system under the current Office of the Registration of Deeds system.

5. Penalties for infringement of trademarks

Finally, the Trademarks Law will enact a range of penalties for trademarks infringement which will further strengthen the rights of IP holders in Myanmar.