What Is the Current Status of the New Trademark Registration and How Does It Work?February 28, 2022
Trademark registration has been somewhat in limbo since a new trademark law, which has not yet entered into force, was enacted on 30 January 2019 in Myanmar. The law changed the way trademarks would be recognized from a “First-to-Use” system to a “First-to-File system”, and specified that to protect a trademark, it needs to be registered with the Myanmar Intellectual Property Department (“MIPD”), a new department set up under the Ministry of Commerce. As a result, those holding trademarks that were registered under the old system with the Office of the Registrar of Deeds (“ORD”) need to reregister them under the new system during the soft opening period.
The Ministry of Commerce issued Order No. (63/2020) (“Order”) on 28 August 2020 specifying a soft opening period, during which priority would be given to existing trademark owners to reregister their trademarks with the MIPD. Moreover, trademark owners could apply for trademark registration electronically through a trademark registration representative, with the MIPD accepting the electronic submission of applications to reregister old marks from 1 October 2020.
The MIPD will open a representative training course and teach representative about the new trademark law and how to file trademarks using its online filing system, and award certificates to successful representatives. Such certified representatives will be given an account for the MIPD’s online filing system through which they will be allowed to file trademarks. The MIPD will be opening a reception desk soon to accept and process trademark registration applications directly from trademark owners who do not wish to use a representative to apply.
As of this writing, the new law has still not entered into force, and the duration of the soft opening period has still not been set and continues until further notice from the Myanmar government. The MIPD has continued accepting applications for trademarks to be reregistered. Further information about registering new trademarks, such as the official fees for trademark registration, the method of payment, and the required forms will be announced prior to issuance of the notification that the trademark law is entering into force.
Meanwhile, the ORD in Yangon, which processes applications for the declaration of trademark ownership (“DTO”), is currently operating and accepting new trademark registrations. A new trademark can be registered with the ORD by registering a DTO under the Deeds Registration Law 2018.
In order to obtain the advantage of being the first to file under the new trademark law, new trademark owners should apply for registration of their trademarks under the current system with the ORD as soon as possible and subsequently file for reregistration of them under the new electronic trademark system with the MIPD.