Trademark in Myanmar. What is “Trademark” in Myanmar ?
Definition of “Trademark”
In Myanmar, there is only the definition of a trademark in the Penal Code 1861. Section 478 of the Code defines a trademark as “A mark used for denoting that goods are the manufacture or merchandise of a particular person”.
Types of “Trademark”
In Myanmar, mark can be separated into trademark (mark for goods) and service mark (mark for service).
Principles of trademark registration
At the present time, Myanmar applies the principle of “First use”. Therefore, the rights of the parties setting up rival claims to ownership of a trademark must be determined in accordance with the principle of common law based on prior use rather than first to file.
Under the new Law Myanmar will apply the principle of “First application” instead of the “First use” Principle as before. Trademarks protected under the current Declaration of Ownership system will NOT be automatically protected over to the new system. Marks recorded under the old system will need to be re-filed and examined once the new law enter into force in order to gain protection in Myanmar.
Required documents of trademark registration in Myanmar
The application for registration of mark shall contain:
1. Declaration of Ownership of Trademark
which describes the name and complete address of trademark owner whether individual or company; the specimen of the trademark/service mark/design; the list of goods to be used with the mark and with the statement that the applicant is the first to create this mark, that nobody is known in using the same mark before and declaring that the applicant is the owner of said trademark, and put the signature under declaration. Above Declaration shall bear stamp duty valued kyat 250.
2. The Power of Attorney
which includes the name and full address of trademark owner and the name, address and the national scrutinizing no. of the agent to be appointed and which is to be signed by the trademark 2 owner. A foreign applicant must execute a Special Power of Attorney. Stamp duty is liable at kyat 1000 for the Special Power of Attorney and at kyat 4000 for the General Power of Attorney.
The Power of Attorney and Declaration of Ownership must be executed and authenticated in the presence of a Notary Public. Notarial authentication requires diplomatic legalization at the Myanmar Embassy/ Consulate in the country where the Applicant’s company is incorporated. The Power of Attorney MUST be signed by the representative/officer of the company who signed the Declaration of Ownership.
Procedures of trademark registration in Myanmar
Currently, Myanmar is not a member of the Madrid System, so when you want to register a Trademark in Myanmar, the applicant must appoint a Myanmar representative to perform all the procedures on his or her behalf registration of trademark protection.
The applicant shall buy and complete the application form at the Office of the Registry of Deed and Assurances. Adhering office duty stamp valued kyat 300 on the completed application form, the applicant/agent accompanying with two witnesses submits the application to the staff officer of Registry Office. The staff officer checks the application and attached documents of Declaration of Ownership of Trademark, the power of attorney and the National Scrutinizing cards as well as checks the application whether it conforms with the two witnesses submit the application further to the Registrar. The Registrar makes counter checking of the application, attached documents, the signature and National Scrutinizing Cards of applicant and the witnesses and, if it is acceptable, getting fingerprints of the applicant and the witness, let him pay registration fee kyat 6 and keep the set of application at the office to enter in the Registry Book.
After six to eight weeks as of filing date the trademark registration process is ended by returning back the registered document to the applicant, bearing with registration number and date, seal of the Registry Office and signature of Registrar. After registration, a Cautionary Notice will be published.
Fee of trademark registration in Myanmar
The basic total fees and charges for registration and publication of the cautionary notice of a trademark in Myanmar (attorney costs included) is 600-1,200$. In practice, the total and exact costs mainly depend on the size of the advertising page of the mark in the local newspapers.
Trademark search in Myanmar
Up till now, although the Soft-Opening for re-filing trademark application in Myanmar under new law has official commenced since October 01, 2020, the trademark database in Myanmar is still not available. Thus, the search will be conducted on our database sources from the publication of the Cautionary Notice in twelve local newspaper which are mostly used by the trademark lawyers and have been updated since June, 1981.
Priority right principles
Since there is no examination procedure, until now claiming priority rights of trademark has not occurred in Myanmar.
Who can file trademark application in Myanmar?
Both domiciled and foreigners can have the rights to file the trademark application in Myanmar.
The trademark owner or the representative being appointed by the power of attorney, bringing the Citizen Scrutinizing card, has to come to the Registry Office to file application. In the cases of foreign trademarks, the agent being appointed by The Power of attorney which is bearing with legalization of the Myanmar Embassy in the respected country, has to come along with National Scrutinizing Card to file application.
How are well-known trademark protected in Myanmar?
Under the current practice, identical or similar trademarks can be registered concurrently by more than one party in Myanmar. In fact, not only do regular trademarks lack protection, but well-known trademarks lack protection of owners’ rights. Therefore, identical trademarks can be recorded and published in a cautionary notice to show they are protected in Myanmar.
Shop owners may use names and well-known trademarks as their shop and/or business names because the rights of trademark owners may be unknown to them. Additionally, under the current law, such shop owners may actually have the right to use such well-known trademarks and names with their shops if they have recorded a declaration of ownership with the Registrar of Deeds and Assurances. Therefore, if these shop owners believe that they have the legal authority to use these trademarks with their businesses and shops, trademark owners are unable to prevent such infringement of their trademarks, unless they have already protected their trademark rights in line with the current practice.
Is multi-class accepted in Myanmar?
Yes. In practice, multi-class applications are acceptable and recommended because there is no substantive examination of the marks
What classification system is followed in Myanmar?
The Nice system shall be applied for trademark registration or any activities related trademark in Myanmar.
What can an applicant do when a third party participating during the registration procedure by initiating opposition proceedings
Since there is no examination procedure nor rejection, there is no appeal process for trademark registration in Myanmar at this time. So, the applications are not to open to oppositions by third parties.
Can change applications after filing it?
According to Direction 13 of the Registration Act, in case of any material changes supposing proprietor’s name, device, address or covered goods services and so on to the registered declaration, it should have to be registered afresh (Documentation included: Declaration of Amendment of Trademark Ownership; The Power of attorney, duly notarized, authenticated and endorsed by the Myanmar Embassy