Open for Business: Registering your Myanmar Trademark TodayOctober 30, 2017
Myanmar’s long awaited legal reform to its intellectual property framework is nearing completion with the recent announcement of a new draft of the Trademarks Bill (the “Bill”). Once enacted, the process for registering your trademark in Myanmar will be streamlined with a soon to be established Intellectual Property Office (“IPO”) replacing the comparatively weaker protection under the current system of registration.
In this client briefing note we set out the important changes which are to be enacted by the Bill on trademarks registration. We also provide some useful and practical advice which your business can consider at this time in order to secure the registration of your mark.
PART I – IMPORTANT CHANGES UNDER THE TRADEMARKS BILL:
1. Centralized Intellectual Property Office
The Bill provides that for the first time in Myanmar there will be a dedicated IPO which will have the responsibility for conducting examination upon, and registration of, trademarks. While it is anticipated that the IPO itself will be complemented with the enactment of subsequent registration rules, its establishment comes as a welcome change to the current (and comparatively weaker) system of trademark registration. Nonetheless, provision for a standalone and dedicated IPO for trademarks is a welcomed change in safeguarding valuable commercial intellectual property (IP) rights.
The position before enactment of the Bill is largely a customary system of trademarks registration with applications typically filed with the Office of the Registration of Deeds (“ORD”) established under the Registration Act 1909 (the “1909 Act”). This customary system of trademarks registration with the ORD enjoys comparatively weaker protection than would be enjoyed under the IPO system. Among the setbacks of ORD trademark protection is the lack of institutions which can enforce registered trademarks.
Moreover, ORD trademarks registration requires a power of attorney which must, under certain circumstances, be executed and authenticated either before the Registrar or a Magistrate. This cumbersome process will be simplified by the Bill which will allow a representative to be optionally used to register a trademark without strict and cumbersome execution formalities.
2. The definition of a trademark under the Bill
Another important change brought about by the Bill is the updated statutory definition of a trademark replacing the archaic definition used in Section 478 of the Indian Penal Code (1860) which defined marks as; “any mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right to use the mark.”
The new statutory definition of a mark has two (2) key characteristics;
- The mark itself must cover “any mark that is seeable by one’s own eyes”, and;
- The mark must be “used, or intended to be used to distinguish goods or services dealt with by a person from those dealt with by another”.
The latter part of the definition is generally unproblematic and accords with the spirit of the former definition in the 1860 Act. However, the scope of the definition as being “seeable by one’s own eyes” is quite narrow.
The implications of such a narrow definition are that it is unlikely that a registrar would accept registration of unconventional marks like sounds, smells and tastes, which are registrable in comparative jurisdictions like the United States and Europe.
Similarly, the interpretation of the Bill makes provision for a ‘series of trade marks’ as “a number of trademarks that resemble each other in their material particulars”. Indeed, whilst it remains to be seen how the Bill will transpire through practice and the subsequent enactment of Trademarks Rules, it is likely that with this provisional acceptance of registering a series of marks, more advanced versions of trademarks like holograms can be registered. There is a similar basis for such trademark registration under UK legislation.
3. Right of priority of your trademark
The Bill provides for a right of priority for prior registration in a Paris Convention country within six (6) months from the filing of the trademark application within that convention country. This will likely make first time bona fide trademark registration under the Bill, once enacted, much easier for firms.
4. Trademark protection period
The Bill provides more protection for proprietors than was previously allowed under the 1909 Act. Perhaps the biggest change is the increase in the registration period from three (3) years to ten (10) years. This new ten (10) year registration period aligns with commercial realities and in practice means that companies do not have to frequently renew their trademark. Moreover, 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.
5. Penalties for infringement of trademarks
A welcome change brought about by the Bill is that the penalties for infringement of trademarks are stricter and include imprisonment of up to three (3) years, a fine of MMK 5 million or both. These penalties replace the comparatively weaker penalties under the old Merchandise Mark Act 1889 which prescribed penalties of one (1) year imprisonment, a ‘fine’ or to both.
These stricter penalties for trademark infringement are to be welcomed and are likely to act as a disincentive for willful trademark infringement which could ultimately cost businesses in the long run.
PART II – STEPS WHICH YOUR BUSINESS SHOULD TAKE TO PROTECT YOUR TRADEMARK:
The right of priority for a trademark is the date upon which the mark is filed. This first to file system means your business should waste no time in registering its trademarks. This should be done, even if under the weaker current system of the ORD, as registering in this manner will allow you to have evidence of a first filing.
This may prove effective against trademark squatters who may try to hold your trademark to ransom, by allowing you to prove first filing.
If you have already registered your mark with the ORD then it is advised that when the Bill becomes law, you immediately seek to have your mark registered with the IPO.
Despite the fact the Bill may yet take some time to become law, protecting your business’s intellectual property should begin today.