What are trademarks?

The new law defines trademarks as any visually perceptible sign that distinguishes the goods or services of one undertaking from those of other undertakings.

This includes an individual’s personal name, letters, numerals, graphical representations, and combinations of colors. However, not all trademarks are registrable. For example, applications to register trademarks that are deemed to lack distinctiveness, or are directly descriptive of goods or services, will be refused. An application may also be rejected if the trademark is applied for in bad faith, or is identical or confusingly similar to someone else’s trademark. Below are some common questions addressed.

I have registered my trademarks in my home country. Why do I need to file new applications in Myanmar?

Trademark rights are territorial, meaning the ownership of a registered trademark in another country will not be sufficient to establish grounds for infringement, if your mark is used by an unauthorised third party in Myanmar. If you are using (or are planning to use) your trademark in Myanmar, trademark registration is highly recommended. Trademark registration is also important if your products or services are offered in Myanmar through a third party who is permitted to use your trademark.

I have recorded my trademarks in Myanmar using statutory declarations in the past, and I have also published trademark notices in the Myanmar newspapers for many years. How does this new law affect me?

In accordance with the new law, trademark owners who have previously recorded trademarks with the Office of Registration of Deeds (ORD) must apply for registration under the new law to obtain statutory trademark rights. In other words, once the new law enters into force, existing trademark declarations and notices will no longer be sufficient to demonstrate ownership of marks in Myanmar.

I am using the trademark under a licence. Can I file an application for the trademark, too?

This will depend on what is agreed between you and your trademark licensor. Nonetheless, the new law requires all trademark licenses to be recorded with the Trademark Office; unrecorded trademark licenses will be deemed void under the law.

How do I file a trademark application under the new system?

The effective date of the new law has yet to be announced.The government is currently establishing administrative bodies and drafting implementing regulations, aiming for completion by the end of the year.

The new law requires the following for a trademark application: application request in the form designated by the Trademark Office; name and address of the applicant for registration (or the representative’s name and address, if submitted by a representative); clear and complete representation of the trademark to be applied for; and description of goods and/or services requested for registration in accordance with the stipulated international trademark classification.

In addition, the following should be provided where applicable: registration number, type, and country of origin of the entity, if applying on behalf of a legal entity; documents supporting, describing, and requesting the claim of priority right, if such right is requested; documents supporting, describing, and requesting exhibition priority right, if such right is requested; certificate of registration (Declaration of Ownership), if the trademark has been recorded at the ORD.

I have a limited budget. Can I file applications by myself?

While this is not prohibited under the new Trademark Law, foreign applicants will likely have to appoint a local representative to file applications. This is common practice in many jurisdictions, and will be further clarified through implementing regulations. Assuming such rules are adopted, it will be necessary to seek professional assistance — which increases the likelihood of application approval and successful maintenance of the mark.

Since the law is not yet effective, what should I do in the meantime?

You should begin collating evidence of existing use of your trademark in Myanmar (such as past trademark notices, advertisements, invoices, catalogues, office stationery, and so on). All such materials should be dated. For trademark owners whose existing marks are subject to licensing arrangements in Myanmar, these too should be audited and checked for up-to-date and accurate depictions of the relationship with licensees, to avoid any ambiguities when evidencing use.

Meanwhile, continue maintaining your trademark registrations under the current recordal system, especially if the trademark in question has not been used in the course of trade in Myanmar. Similarly, trademark owners can continue to publish trademark notices in local newspapers.

Sher Hann Chua is a consultant in Tilleke & Gibbins’ Yangon and Bangkok offices.

Source: https://www.mmtimes.com/news/key-facts-about-trademark-law.html