Protection of trademarks in Myanmar

Now the specific Trademark Law has been enacted by Union Parliament on 30^th January 2019 and it has come into force on April 1, 2023.

The old system of    trademark protection is no longer effective from the time this  Trademark  Law is enforced. Thus, the trademarks registered under old system at the Registry of Deeds need to re-file under new trademark law in order to get the rights granted by the new law. Priority right will be given to the marks that have been actually put to use in Myanmar. There will be examination and opposition procedures under new trademark law and thus the true owner may have the chance to submit authentic evidence to oppose against other unrelated party who files the same mark.

Trademark system according to the Trademark Law (2019)

Step 1.             Filing of application and formality check

Step 2.             Giving filing Date

Step 3.             Examination(Formality +Absolute Ground)

Step 4.             Publication

(Where no Opposition case ):

Step 5.             Publication for registration

Step 6.             Issue Certificate

(If there is opposition case ):

Step 5.             Substantive Examination(Absolute + Relative)

Step 6.             Publication for registration

Step 7.             Issue Certificate

The followings are important provisions of this Trademark Law:

Definition of a Trademark

Section 2(j):

A mark  means any visible sign or a combination with other sign , capable of distinguishing the goods or services of one undertaking from those of other undertakings including names, letters, numerals, configurations, combination of colors. It includes trade mark, service mark, collective mark and certification mark.

Trademarks not eligible for registration are prescribed in Section 13 and 14.

Section  13.      absolute ground for refusal 

1. Trademarks which are devoid of distinct character;
2.  Trademarks which consists exclusively of a sign or indications of  classes, related facts, quality, quantity, intended use, value, geographical origin, production time, or other characteristics of goods and services;
   • (Exception: A trade mark shall not be refused registration by virtue of subsection (a) and (b) if,(1)before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it; (2)the applicant exclusively has been constantly and freely using that mark in good faith in the trade circle of the Union.
3. Contradictory to the  peace and tranquility  , morality and faith of the people or dignity ,  highly valued  culture of the Union or highly valued tradition of nationals.
4. becoming a generic terms or a customary expression or  practical usage  in the course of the trade,
5. deceiving the public or the circle of trade to confuse the matters relating to  subsection (b),
6. directly copying wholly or partly, imitating or misleading flag, insignia, other badges, symbols used lawfully by a state describing its management, guarantee or an assurance mark of quality, or the insignias or the flags or other badges or name or acronym of an organization formed by international governmental organizations.
7. using symbols and emblems which are specifically protected under the international conventions in which the Union is a member state, 

Section 14.       relative ground for refusal.

• misleading to the consumers by using identical or similar mark to a mark prior registered by any other person, or with a mark applied under priority right, in respect of identical or similar goods or services of the mark in question,
• using a mark affecting to private rights of a person or the name and good-will of an organization legally established, without the consent of such person or organization,
• a mark which may infringe the intellectual property rights of any other person,
• filing application for the registration of a mark in bad faith.
• Mark that applies for the registration is not merely identical or similar to the well-known mark, but it is also identical or similar to the goods or services so that it causes confusion to the consumer.
• Mark that applies for the registration is being identical or similar to the registered well known mark but different in the goods or services, which leads to believe a connection between the owner of well-known mark and the goods or services in use; and the manner of such using is likely detrimental to the interest of the owner of registered well-known mark;

Invalidation and Cancellation of the Registration of a Mark is prescribed in Section 50 and 51.

Transition steps for old system registered or use marks are prescribed in Section 93   as follows:

• The owner of the mark which has been registered at the Office of the registration of Deeds or the owner of the mark which has not been registered but being used  in the market within the Union shall file registration in accordance with this Law if they desire to obtain the right of registered mark
• The marks which has been actually using   in the market within the Union, regardless of whether or not they have been registered at the Office of the registration of Deeds, shall be given the priority right in a specific period relating to the use of such mark in respect of the goods or services attached with the said mark.