On 28 August 2020, the Myanmar Ministry of Commerce issued Order No. 63 of 2020 announcing the long-awaited commencement date of the soft opening of the new trademark registration system (“soft opening period”). The duration of the soft opening period, which begins on 1 October 2020, has yet to be announced although it is anticipated to last for six months.
Re-filing of trademarks
The soft opening period will be open exclusively to:
(a) trademark owners who had availed themselves of Myanmar’s old registration system by filing a Declaration of Ownership of their mark with the Office of the Registration of Deeds (“ORD”); and
(b) trademark owners whose marks have been in actual use in Myanmar whether registered with the ORD or not,
to re-file their trademarks with the Myanmar Department of Intellectual Property (“MDIP”).
No new trademark applications
During the soft opening period, it will not be possible to file “new” trademark applications.
Trademark owners who do not meet the criteria set out above will have to wait until the official opening of the new registration system before they are able to file any “new” trademark applications.
Trademark application process
The re-filed trademarks must match the details recorded in the Declaration of Ownership (“Declaration”). Applications by any foreign trademark owners must be made via their trademark agents in Myanmar.
Further details of the official fees, specific documentation and other information required are expected to be released in due course, although trademark owners should in the meantime collate the following information and documents if there is any interest to re-file their trademarks:
(a) Registered trademarks under the Declaration
• The name and address of the person or legally formed entity applying for registration. Where the owner is an entity, the registration number, type and country of the entity will also be required;
• Name, National Register of Citizens card number and address of the local agent/representative (if the applicant will be entrusting an agent/representative with its application);
• A clear specimen of the trademark identical to the representation in the Declaration;
• Classes and specifications of goods/services to be identical to or narrower than in the Declaration;
• Specific documentation relating to the types of rights which are claimed (if applicable);
• Where the mark has been registered under the old system, a copy of the recordation of the Declaration. A scanned copy of the Declaration would suffice for purposes of re-registering the trademark although originals may be subsequently requested for review by the MDIP.
(b) Unregistered trademarks in use in Myanmar
• The name and address of the person or legally formed entity applying for registration. Where the owner is an entity, the registration number, type and country of the entity will also be required;
• Name, National Register of Citizens card number and address of the local agent/representative (if the applicant will be entrusting an agent/representative with its application);
• A clear specimen of the trademark;
• Classes and specifications of goods/services;
• Specific documentation relating to the types of rights which are claimed for (if applicable);
• Date of first use;
• Evidence of use of the trademark as follows:
(i) Cautionary notices published in local newspapers and/or journals;
(ii) Proof of use in the markets of Myanmar (e.g. labels or signages depicting the manner in which the trademark is being used);
(iii) Advertisement or promotion of goods and services bearing the trademark (e.g. leaflets, brochures, photographs);
(iv) Tax receipt or expenses receipt (e.g. invoices, purchase orders or other similar documents to Myanmar entities/individuals depicting the trademark).
Further information
Should you wish to file or re-file your trademarks in Myanmar, please do not hesitate to get in touch with your usual contact at Allen & Gledhill or any of the following:
Allen & Gledhill (Myanmar)
Minn Naing Oo
Myanmar : +95 1 925 3719
Singapore : +65 6890 7619
[email protected]
Ei Ei Khin
Myanmar : +95 1 925 3717 / 3718
[email protected]
Krystle Kok
Myanmar : +95 1 925 3717 / 3718
Malaysia : +603 2299 3844
[email protected]
Allen & Gledhill (Singapore)
Dr Stanley Lai, SC
+65 6890 7883
[email protected]
Low Pei Lin
+65 6890 7516
[email protected]
Isaac Tung
+65 6890 7522
[email protected]
Rahmat Lim & Partners (Malaysia)
Pauline Khor
+603 2299 3818
[email protected]
Allen & Gledhill (Myanmar) Intellectual Property Practice
Allen & Gledhill (Myanmar)’s Intellectual Property (IP) Practice is a dedicated and growing IP Practice helmed by Managing Director Minn Naing Oo, a Singapore and New York qualified lawyer fluent in the Myanmar language, and supported by an experienced IP lawyer from Allen & Gledhill’s Malaysian associate firm, Rahmat Lim & Partners. The IP Practice of Allen & Gledhill (Myanmar) is backed up by a team of local consultants and supported by the Allen & Gledhill network.
Leveraging on this trusted network, Allen & Gledhill (Myanmar)’s IP team provides advice across the entire life cycle of IP assets and is able to draw from the specialised experience of our regional IP lawyer on the ground who is seasoned in coordinating and developing strategies for the prosecution, protection, management and maintenance of IP in a number of jurisdictions. With our vast array of regional resources, we are well equipped to advise on the whole gamut of IP laws, practice and procedure in Myanmar.
The Allen & Gledhill (Myanmar)’s IP Practice’s key strengths lie in providing legal services based on the principles of teamwork, collaboration, commitment to client service, and assisting clients to stay ahead of the competition in the developing IP space. The team offers clients customised, individual counselling and strategic advice in formulating the best practices for their local and international IP protection.
Allen & Gledhill Intellectual Property Practice
Allen & Gledhill’s Intellectual Property Practice is consistently voted as one of the leading intellectual property (“IP”) practices in Singapore. The team provides advice on a broad range of IP matters, both contentious and non-contentious, including prosecuting, enforcing and defending copyrights, patents, trade marks, domain names and registered designs in Singapore and Asia. The Practice regularly develops strategies for the use, protection, management and exploitation of IP, and negotiates, reviews and drafts commercial agreements involving the development, application and commercial exploitation of IP such as IP acquisitions and disposals, licensing and franchising. The team is well-placed to advise on and assist with the necessary applications, registrations, portfolio management and coordination of IP.
The IP Dispute Resolution team has extensive experience in all areas of IP litigation, enforcement, arbitration and mediation. In recent years, they have successfully represented our clients in achieving several notable and groundbreaking reported decisions before the Singapore courts concerning patent infringement and invalidation, copyright infringement, infringement of trade marks and registered designs, passing-off and the misuse of confidential information. Where required, the team undertakes urgent applications to court for interim injunctions, as well as civil and criminal search and seizure orders. They are also well-equipped to issue freedom-to-operate opinions and invalidation advice in any field and industry, and have extensive experience in managing and overseeing cross-border IP disputes in many countries, especially South-east Asia (working with partner offices in Malaysia, Myanmar and Indonesia).
The Patents team is qualified in a diverse range of disciplines and technical expertise such as chemistry, biotechnology, computer science and mechanical and electrical engineering. They also have extensive and specialised experience in patent prosecution, advisory and litigation support work. Their work include searches and drafting of specifications, patent litigation support, patent validity, patent revocations (IPOS) and infringement analysis.
Rahmat Lim & Partners Intellectual Property Practice
Rahmat Lim & Partners’ Intellectual Property (IP) Practice offers a full range of IP-related services across key industry sectors and advises on a broad spectrum of contentious and non-contentious IP matters locally, regionally and globally. Apart from transactional and enforcement briefs, the IP lawyers of Rahmat Lim & Partners have extensive experience in prosecuting, defending, maximising and enforcing the value of IP in all forms. The IP lawyers of Rahmat Lim & Partners are assisted by a team of experienced paralegals and legal executives who also provide exclusive support to the IP Practice of its associate firm Allen & Gledhill (Myanmar).
With a reliable network of foreign associates across continents, the IP team of Rahmat Lim & Partners is able to tap onto these resources to register their clients’ trade marks and patents across many jurisdictions seamlessly. The team is experienced in handling urgent worldwide filings for local multinational corporations and foreign conglomerates, with some of the international IP portfolios covering over 50 jurisdictions. The team is further complemented by the assistance of a bespoke IP management software, allowing the team to extract the benefits of quick and effective navigation of trade mark and patent applications throughout many countries.