As a recently opened market with a great potential, a member State of ASEAN and a signatory to the Trade Related Aspects of Intellectual Property Rights Agreement, Myanmar is attracting many foreign investors who yet carefully consider the old (or even outdated) and limited legal framework.
Before entering a new market, you should start by protecting your intellectual property assets, such as but not limited to, your mark at the earliest possible so as to establish your rights in the local market first and have adequate tools to defend or enforce such rights against infringers.
Myanmar is currently revising its Intellectual Property system and drafting specific Intellectual Property laws, notably the Trademark Law which is expected to be enacted within this year 2014.
- Myanmar’s existing system for trademark protection
Despite the lack of any specific legislation governing trademarks in Myanmar, it is possible to protect your mark under the current Registration Act by recording a Declaration of Ownership of Trademark with the Office of the Registration of Deeds and publishing a Cautionary Notice of the registered mark in a local newspaper to inform the public of your ownership on the mark and warn against potential passing off or infringement.
Under the current system, it is strongly recommended to renew the registration of your mark every three years by way of re-submission of a Declaration of Ownership and/or re-publication of a Cautionary Notice.
Whilst these documents help proving IP ownership in case of dispute, you must keep in mind that use of your mark and establishment (e.g. local distributor) in Myanmar are important factors taken into consideration when seeking enforcement of your rights before the local Courts.
- Myanmar’s transitional provisions: a grace period of three years
Pursuant to the drafted Trademark Law, all existing trademarks recorded under the old declaration system will have to be applied for registration again within three years from the date of enactment of the new Trademark Law.
- Myanmar’s new system for trademark protection according to the draft Trademark Law:
Securing protection of your mark in Myanmar now without waiting for the Trademark Law to be effective is the best way to safeguard your rights in this fast-changing market. Trademark owners should undertake the following actions as soon as possible:
1) To file a Declaration of Trademark Ownership with the Office of the Registration of Deeds;
2) To publish a Cautionary Notice in a local newspaper; and
3) To file a new application for trademark registration with the Myanmar Intellectual Property Office within 3 years from the effective date of the new Trademark Law.