The Bill of the first trademark law of Myanmar was signed into law in January 2019 but has not yet come into force. With an aim to facilitate a smooth transition from the first-to-use to first-to-file system under the new law, on 28 August 2020, Ministry of Commerce of The Union of Myanmar issued Order No. 63/2020 announcing 1 October 2020 as the date on which the Soft Opening for trademark filings will commence. During this period, which is expected to last at least 6 months, trademark owners will be able to file “old” trademarks before the new law comes into force. Old trademarks include those having been granted registration under the current practice. “New” trademarks can be filed only after the Grand Opening commences. It remains inconclusive whether the Grand Opening will come in April 2021. The Ministerial Order is silent on that.
I. Time frame
The Soft Opening will start on 1 October 2020 and last until the date of Grand Opening which still has not been announced to date. Many anticipate that the Soft Opening will last for at least 6 months.
II. Preparation for Soft Opening
(a) Trademarks allowable
To obtain protection under the new law, holders of trademarks having been registered with the Office of Registration of Deeds under the current regime must re-file the marks with the Myanmar Department of Intellectual Property (MDIP). It is required that the trademarks must be the same as those in the existing registrations and the specifications of goods/services must not be broader than those in the existing registrations.
Owners of trademarks that have never been registered with the Office of Registration of Deeds but put into use in Myanmar can also file the marks during the Soft Opening period by submitting documentary evidence of use in Myanmar.
(b) Official fees
According to the Ministerial Order, the official fee structure and payment methods will be announced later. Local practitioners anticipate that the official fee structure may be available not before the Soft Opening but near the Grand Opening.
The Soft Opening may work like this: (i) when the Soft Opening commences on 1 October, trademark owners may have to proceed with the filing even before knowing the official fee structure; (ii) before the Grand Opening starts, the Myanmar Department of Intellectual Property will announce the official fee structure as well as the Rules and Regulations of the new registration system; (iii) only trademarks that fulfill the necessary documentation and pay the official fees will be allowed to move to the examination stage of the new system.
All marks filed during the Soft Opening will be deemed to have the date on which the Grand Opening Commences as the official filing date under the new system.
(d) Documents required
In the early stage of the Soft Opening, trademark filings can only be done through local agents who are granted access to the online filing system. Official Form of Authorization (called “TM2”) will be released later. It is likely that the MDIP will allow trademark owners to attend to the filing first, with the TM2 with notarization to be submitted later.
Information required for the online filing:
Documents required for “Existing Registrations” basis:
Documents required for “Use in Commerce” basis:
III. Relevance of Current Registration Regime
The practice under the current registration regime will remain applicable after 1 October 2020. The Government has not yet set the cut-off date for the current practice.
Registering trademarks under the current registration regime soonest possible is advisable for owners whose marks have never been registered nor used in Myanmar before, so that the marks will be qualified for the re-filing during the Soft Opening period. //