[2019 Update] Current Status of Myanmar Intellectual Property Law

There has been so much talk about new IP laws in Myanmar. Here, we at KASS break it down into bite-sized chunks to shed light on the current situation.

What’s the current position of IP rights in Myanmar?

At present, Myanmar is still working on their intellectual property (IP) laws and regulations. There are no substantive laws, IP governing bodies or judicial courts for deciding cases related to IP rights in Myanmar. Myanmar only adopts existing laws when deciding disputes on IP rights and registration matters. The Ministry of Science and Technology (now Ministry of Education) recently drafted new IP laws to streamline and improve the administration of IP rights in Myanmar and submitted them to Parliament (as of 30 January 2019, the new Trademark and Industrial Design Laws have been enacted).

What can we do right now to protect IP rights in Myanmar?

In view of the aforementioned new IP laws, the Registry of Deeds in Myanmar has ceased receiving patent and design applications since September 2017. Patent and design registration can therefore be sought after the IP Law is promulgated in Myanmar. There will be no re-registration process from the current system to the new system and it will follow the first-to-file system. As of now, in terms of IP registration, only trademark applications can still be filed at the Registry of Deeds.

Under the current trademark filing process, trademarks are registered in Myanmar by filing a Declaration of Ownership at the Registry of Deeds. Once the registration process is completed, a Cautionary Notice is published in newspapers to inform the public of the owner’s exclusive rights on the trademark. Thus, if the owner wants to enforce their rights, the Declaration of Ownership and Cautionary Notice are the primary and concrete forms of evidence of continuous use of their trademark (to establish use of the trademark in Myanmar).

Where copyright is concerned, there is no registration procedure. At present, the protection of original literary, artistic, musical, and dramatic works is legislated under the Copyright Act (1914). The current law does not protect the copyright of foreign countries, as Myanmar has neither signed the Paris Convention for the Protection of Industrial Property, nor the Berne Convention for the Protection of Literary and Artistic Works. Meanwhile, Geographical Indications (GIs) can be registered at the Registry of Deeds under the current Registration Law.

What can we expect when the new laws are in place?

Under the current IP Bills, a first-to-file system will be applied in the registration of IP rights when the new law is enforced. Some features in the new laws include: In deciding IP filings, there will be absolute and relative grounds for examination matters; examiners and relevant officials will be appointed; and there will be opposition rights and cancellation actions.

Additionally, we will be able to file not only trademark and service marks at the Myanmar IP Office but also collective marks, certification marks, product packaging and 3D logos. GI applications are also included as a subsection of trademarks law (in reference to the current bill).

Priority rights and exhibition rights will also be provided under the new laws, whereby if the applicant had formerly registered their trademark or had their trademark placed on exhibits in an officially recognized exhibition in a foreign country (PARIS Convention or WTO member), they are entitled to priority if the application is filed in Myanmar within 6 months of the date of registration or exhibition of the trademark.

What should brand owners do in preparation of the new law?

All brand owners, local and foreign, should prepare to register their old and new marks immediately when the new IP laws come into force. As rights will be obtained on a “first come, first served” basis, marks that are filed first have better rights than marks that are filed later or even marks that had been used in trade in Myanmar earlier. As noted above, priority and exhibition rights can also be claimed by foreign brand owners for trademarks formerly registered in foreign countries.

What’s the current status of the Bills?

15 February 2018: Amyotha Hluttaw (Upper House of Parliament) ratified the Trademark, Patent, Industrial Design and Copyright Bills.
12 December 2018: Pyithu Hluttaw (Lower House of Parliament) announced that the Trademark Bill submitted by the Upper House was approved.
17 December 2018: The Lower House announced that the Industrial Design Bill submitted by the Upper House was approved.
22 January 2019: The Upper House approved the Trademark Bill and Industrial Design Bill (resubmitted with amendments by the Lower House).
24 January 2019: Pyidaungsu Hluttaw (Union Parliament) approved the Trademark Bill and Industrial Design Bill.
30 January 2019: Union Parliament enacted the Industrial Design Law (under Pyidaungsu Hluttaw law No. 2/2019) and Trademark Law (under Pyidaungsu Hluttaw law No. 3/2019) after signing and approval by the President.
11 February 2019: Union Parliament has approved the Patent Bill.
11 March 2019: Union Parliament enacts the Patent Law (under Pyidaungsu Hluttaw law No. 7/2019) after signing and approval by the President.
24 May 2019: Union Parliament enacts the Copyright Law (under Pyidaungsu Hluttaw law No. 15/2019) after signing and approval by the President.

Hence, we can expect that the corresponding regulations will follow soon. Stay tuned for further updates!

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.