This may be the most important blog we have ever written. Action is required by your company to protect trademarks even if already declared. If not your responsibility please share now this link for this blog to selected colleagues.
Existing trademark declarations of ownership are not automatically transferred to the new system.
Myanmar will be introducing new laws that cover trademarks and Intellectual Property (IP). You must be ready to act very soon, within legally binding timescales, to protect your trademark and IP in Myanmar.
In February this year The Upper House of the Myanmar Parliament passed the Trademark and Geographical Indication Bill. This new law means that Myanmar will have controls closer to international laws for this topic.
Myanmar has been operating without a formal trade mark registration and control system. Firms who did register, completed a Declaration of Ownership for their trademark. This was recorded with the Office for Registration of Deeds. This then led to a “Cautionary Notice” being published in the local press. The purpose being to publish the new information and also to hear from and identify any potential claimants who wanted to contest ownership. This complies with the Registration Act, 1908. Due to the new law The Myanmar Intellectual Property Office will be established, operating under the Ministry of Education for the registration of trademarks.
You have some time to respond to these changes, BUT not doing so could be critical for your company. The new law awaits approval from the Lower House and current predictions for its full approval are for June 2018.
The 2008 Constitution of Burma says that laws signed by the President, enacted by the Pyidaungsu Hluttaw, or regional and state Chief Ministers “shall be promulgated by publication in the official gazette. The laws come into effect the day of such promulgation, unless otherwise stated”.
The official gazette is The Burma Gazette. This was a British invention created to publish circulars. The first edition was called The British Burma Gazette and was published in January 1875.
There will be safeguards and of course extensive guidelines associated with the new law. However, as it stand at present the draft law does not mention any protecting transition period for existing trademark registrations. For all companies, notably foreign firms, there is one more very important detail. This is also important for any company who has not completed any registration process, maybe because they have not yet started trading here, but intend to start soon.
This key element is called First-to-File Ownership. This allows recognition of trademark owners on a first-to-file basis. It is important to note that prior use of a trademark is not taken into account. A competitor or proposed competitor could attempt to register the said trademark. There are, as we say guidelines and controls, provisions to oppose a registration, but arbitration procedures are not clear.
There is no doubt, you must register with the new process in a timely manner. The alternative? Someone else might register a trademark and prevent anyone else using it.
FocusCore can help you and also provide services to obtain permits and visas. In addition, we have now a very broad range of corporate services and associates with Bookkeeping, Office Rentals, Permanent & Contract Staff Recruitment and Legal services, to assist companies before trading commences and ongoing with strategic guidance and consultancy – routes to market expansion etc.
Foreign investors should know that Myanmar is already signed up to the World Trade Organization (WTO) Agreement on Trade Related Aspects of Intellectual Property Rights, the TRIPS Agreement, 1994. There is important detail within this agreement and Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization. This is referred to as the “WTO Agreement”, which was concluded in April, 1994, entered into force on January 1, 1995. The TRIPS Agreement binds all Members of the WTO and, as we said, Myanmar is a member. See also below reference to the Nice Agreement.
This agreement covers:-
Copyright and Related Rights, Trademarks, Geographical Indications, Industrial Designs, Patents
Layout-Designs (Topographies) of Integrated Circuits, Protection of Undisclosed Information, Control of Anti-Competitive Practices in Contractual Licences, and Enforcement of IP and Related Laws.
Foreign businesses are rightly encouraged by these new laws as Myanmar will provide protection for trademarks – but there is the proviso that firms must register or re-file correctly their trademarks and in the correct timescale even if currently recorded in the existing Declaration of Ownership listing. You do not have the option of automatic registration having been in the current listing. Registrations are not transferred automatically – you must file again.
Note also that the new law will conform to the Nice Classification. The Nice Agreement (1957) is a system of classifying goods and services for the purpose of registering trademarks via the World Intellectual Property Organisation, WIPO. This, together with TRIPS, is an important milestone for Myanmar.
We have reported many times on the rapid and continuing rise in foreign investment entering Myanmar. Increasing numbers of companies are moving here. Some from China to avoid rising labour costs. Myanmar is now to adopt new laws that come into line with other countries notably ASEAN countries, yet Myanmar still has low labour costs. Companies from many countries, now entering Myanmar with new or known trademarks can now do so with confidence. BUT do not forget, as stated above, the First-to-File procedures.
If a company or person(s) register a trademark, this then closes the door to anyone else using that mark. Trademark registration will run for ten years with then a procedure for renewal. There are safeguards, for example a well known name cannot be registered. You should call us now as when the new law is published in the gazette, it is law and in force. You must abide to the timescales.
It is not our aim to cover other elements in detail here but together with Trademark Law these include:-
Myanmar is not signed up to the Paris Convention. This provides “Protection of Industrial Property or any other treaty protecting patents including the Patent Cooperation Treaty (PCT).” But the new Patent Law will introduce a patent registration procedure apparently close to rules seen in many other countries who operate under the Paris Convention. This will give more power to claimants seeking to initiate legal action to stop patent infringement.
Industrial Design Law
This is a new procedure to register industrial design and will be valid for 5 years with renewal options.
Copyright laws from overseas are not currently recognised – as per the Myanmar Copyright Act, 1914. This will be replaced by the new Copyright Law, offering protection to works created by nationals from countries who are also members of the TRIPS agreement.
This is a major change, bringing good news for investors and will further boost confidence for all sizes of companies with their brand names who are not yet operating in Myanmar.
We have said now is the time to enter BUT now is the time you MUST ACT to protect your IP. Contact FocusCore now and take steps to obtain this protection for your trademarks.