The Myanmar government has recently flagged its intention to implement new trade mark laws commencing mid-2020. This is good news for global brand owners hoping for Myanmar’s laws to be better aligned to international trade mark standards. However, brand owners must take positive steps to ensure that their trade marks remain protected under the new system.
When will the new laws come into place?
The intention has been expressed for the new laws to be implemented in two phases. The exact implementation dates are awaiting government confirmation, however it is understood:
- A ‘soft opening’ period will commence early 2020, followed by;
- A ‘grand opening’ period thought to begin around May 2020.
What do you need to do?
In order to ensure that your current trade marks remain protected, it is necessary to re-file your trade marks within the ‘soft-opening period’. Failure to re-file within the ‘soft-opening’ period may result in the loss of priority date for your trade marks, with no re-issued trade mark filings accepted once the ‘soft opening’ period closes, which will occur on the ‘grand opening’ period commencing.
The Myanmar Government is currently in the process of finalising the documentary requirements necessary for re-filing. Therefore, the ‘Soft Opening’ period has not yet commenced and no new re-filings can yet take place. However, brand owners with marks in Myanmar can be preparing their filing information and gathering their existing documents to act as soon as the re-filing period opens.
How can brand owners re-register?
There are several options which existing brand owners can undertake in order to re-file their Myanmar trade marks once the ‘soft opening’ officially commences. Importantly, each option has different implications for priority dates, costs and documents required. The available options at this time are briefly listed below:
Option 1: Re-file your trade mark without claiming priority use
- How: This option involves submitting a declaration of ownership of a prior trade mark, and a letter of appointment (TM2 Form)/ Powers of Attorney (POA).
- Result: The priority date of your re-registered trade mark will be the date upon which the trade mark is filed during the ‘soft opening’ period.
- Advantages of Option 1: This is most likely the cheapest option, given more limited background documents will be required which will also mean it could be a more convenient option not requiring evidence of use, or details of a published cautionary notice.
- Limitations of Option 1: The priority date of any existing rights will not be protected.
Option 2: Re-file the trade mark claiming priority from a cautionary notice
- How: File a declaration of ownership, a cautionary notice, and an appropriate letter of appointment (TM2 Form)/ POA.
- Result: The priority date of your re-registered trade mark will be the date which appears on the cautionary notice.
- Advantages of Option 2: This is also a cheaper option, with no use evidence required, and the priority date of an existing cautionary notice will be retained.
- Limitations of Option 2: This option is only open to brand owners who already have a published cautionary notice.
Option 3: Re-file the trade mark claiming priority based on evidence of use
- How: File a declaration of ownership, letter of appointment (TM2 Form)/POA, cautionary notice and/or evidence of use. Examples of evidence of use include invoices, import license and/or advertisings.
- Result: The priority date of your re-registered trade mark will be the date of first use that can be established by the evidence.
- Advantages of Option 3: This option can provide an earlier priority date if earlier use evidence exists.
- Limitations of Option 3: Given the need to gather evidence, this is the most expensive re-filing option.
Brand owners can begin preparing for any re-filings, and considering their re-filing options, immediately if they wish to be ready to make use of the soft opening period once it commences, particularly given that at this stage the official forms may be agreed and the period may open on limited notice.
If you are considering or are already involved in a re-registering your trade mark, speak to a member of our IP Team to discuss any further questions or obtain further advice on this matter.
Keep an eye on the brand protection blog as we will continue to provide updates to guide you through the implementation of the new trade mark laws.
We would like to acknowledge the contribution of Ying Yi in preparing this article.
 Note that the TM2 Form under the new legal regime has yet to be released, and we are still awaiting confirmation on whether old POAs can be used.