On 1 October 2020, a transition period for Myanmar’s new trade mark system will commence.
The new system will replace the existing practice of recording marks with the Office of Registration of Deeds (ORD) with a formal, electronic trade mark registration process.
The update will see the South East Asian country move from a first-to-use system to a first-to-file system, similar to China and other jurisdictions.
During the transition period, dubbed the soft opening, owners of marks registered under Myanmar’s old system and marks actually in use in Myanmar will be eligible to apply for registration.
Owners of existing marks will need to re-register their marks to ensure they continue to be protected. All marks registered with the ORD under the old system will be revoked.
Owners of marks that are in use in Myanmar but not registered with the ORD will also be eligible to apply. These applications must be supported by evidence of prior use.
Applications filed during the soft opening will be taken to have been filed on the date of the grand opening. The soft opening is expected to last for six months, although the date of the grand opening has not yet been announced. Official filing fees are also yet to be published.
Owners of marks that are not registered or in use in Myanmar will have to wait until the grand opening to file their applications. Accordingly, we recommend that eligible businesses interested in registering or maintaining trade marks in Myanmar capitalise on the soft opening period to secure the earliest possible filing date. This will be particularly important given the change to a first-to-file regime.
Owners of trade marks registered in states that are party to the Paris Convention for the Protection of Industrial Property will be entitled to a six month priority window, notwithstanding the fact that Myanmar is not itself a contracting state.
HWL Ebsworth’s intellectual property team has extensive experience in advising businesses regarding international trade mark protection and portfolio management. If you would like to apply to register your business’s trade marks anywhere around the world, including in Myanmar, please contact us for further information on how we can assist you.
This article was written by Luke Dale, Partner and Kelly Williamson, Solicitor.