A good Hong Kong colleague said to me recently, “How often do you get to witness the birth of trade mark law in a country? Not just new but original?” Myanmar, previously called Burma, is such a country.
Myanmar is the largest country in mainland South-East Asia. It is bordered by Bangladesh, India, China, Laos, Thailand, and coastally, by the Andaman Sea and the Bay of Bengal. Myanmar was governed by the British from 1824 to 1948. Queen Victoria was not only Queen of Wales, Scotland and England, she was also once Empress of British India, which at the time included Burma. Myanmar is reported to have a young dynamic population of close to 54 million, living in a country where rich relatively untapped natural resources abound. It is quite possibly a country on the cusp of Western-type consumerism in the next 10 years or so.
There is currently no official trademark law in Myanmar. But there is new trademark legislation which was enacted on 30 January 2019. A further period for the preparation and issuance of rules and regulations is still required. Therefore, it is still uncertain what are the procedures, details and related costs involved in the registration of trade marks. At this stage, the new legislation is to be submitted with the Myanmar Parliament on a date to be confirmed but quite possibly sometime in August this year.
Currently, Myanmar operates under an archaic system of Cautionary Notices. Firstly, a mere declaration of ownership of a trade mark is required to be filed at the Registry of Deeds and Assurance in the country. Secondly, after official endorsement is received from the Registry with no official checks on any claims made in the declaration, a Cautionary Notice claim must be published by the endorsed owner of the relevant trade mark in a local newspaper. Once the new trade mark legislation is effected, all existing trade mark claimants who have recorded their rights under Myanmar’s current system must file new applications to protect their marks or risk losing any protection.
A Myanmar colleague has advised me that Australian trade mark owners should consider proceeding now under the current system of Cautionary Notices if they would ultimately like to register their trade mark in Myanmar because if a mark for which registration is sought is already on record at the Registry of Deeds and Assurance, the submission of a certificate confirming the same is will stand as evidence of trade mark ownership by the claimant. We have also been informed that there is likely to be a six-month “soft opening” period for the Myanmar Department of Intellectual Property (MDIP)’s new e-filing system, during which time the MDIP will only accept applications to reregister old registrations recorded with the Registry of Deeds and Assurance. Therefore, for key trade mark owners, this period is intended to provide a period of priority against an influx of “new” applications once the new law is promulgated. Trade mark owners need to be watchful of applications by unscrupulous parties or trade mark squatters who seek to profit by registering the trade marks of others.
For us, trade mark attorneys, the birth of trade mark law in Myanmar is indeed a rare occurrence and something to remember from an “I was there…” perspective. But for key trade mark owners, this is something that may need to be acted upon sooner rather than later, with no time to waste, to ensure valid trade marks rights are not lost, especially if Myanmar represents a possible important market in the not too distant future.