These days, trademarks are essential to business and they take many forms and identity a huge array of goods and services. Enterprises spend enormous amounts of time and money developing their brands and trademarks. A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. The Trademark Law 2019 was passed by the Parliament of the Republic of the Union of Myanmar on 30th January 2019 and came into force on 1st April 2023 under Notification No.8/2023. Under Section 2 (k) of the Trademark Law, 2019, trademark means any mark capable of distinguishing the goods of one undertaking from those of others undertakings in trade. There are also different kinds of marks which are protectable under Myanmar Trademark Law, such as collective marks, certification marks, service marks, trade names, well-known marks, and geographical indications.

There are also some conditions to be a trademark, it must be distinctive so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products, it must not be deceptive, that is, it should not be likely to mislead the consumers as to the nature or quality of the product, it should not be contrary to public order or morality, it should not be identical or confusingly similar to an existing trademark.

Myanmar is one of the original members of the General Agreement on Tariffs and Trade (GATT), now known as the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO). WIPO has a cooperation agreement with the WTO to extend legal and technical assistance to countries in the implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), which applies to all WTO members, including Myanmar. As such, Myanmar has, in the past, sought WIPO’s assistance in the drafting of effective Intellectual Property (IP) laws for the protection of IP rights, and as a result, Myanmar enacted Trademark Law, Copyright Law, Patent Law, and Industrial Design Law in 2019. 

Before Trademark Law 2019, there was no specific or substantive law concerning trademarks in Myanmar. Despite the absence of trademark laws, the Penal Code, the Registration Act, the Specific Relief Act, Private Industrial Enterprise Law, Anti-Money Laundering Law, Competition Law, Registration of Deeds Law, and Sea Custom Act could have been used to settle trademark disputes via civil or criminal action. Among them, trademark registration under the Registration Law was a common method for seeking trademark protection. Under the aforementioned law, a proprietor needed to register his trademark by way of a Declaration Deed, in conformity with the existing laws, to own the mark. The mark itself was registrable at the Registration of Deeds Office. This was needed to obtain the legal ownership of the mark. After registering a trademark, a Trademark Cautionary Notice would have been announced in daily newspapers to notify the public of the proprietorship of the mark. Trademark registration was not compulsory, nor was it conclusive proof of the proprietorship of the mark. Nevertheless, the registration gave evidential value for determining the ownership of the mark, constituting prima facie evidence in case of a criminal or civil proceeding.

Under the old system, unregistered marks were protected, provided their owners could prove their actual use in commerce. Therefore, an unregistered mark could prevail over a registered mark if the owner of the unregistered mark proves that its use predates the use of the registered mark. The Intellectual Property Department (IPD) and the Ministry of Commerce are responsible for the implementation of the various IP legislations in Myanmar. The registered trademark under the old system will not be protected by the Trademark Law 2019, and they must be re-filed and re-registered under the Trademark Law 2019. The IPD issued its Notification No. 63/2020 announcing that the IPD will start accepting submissions of applications to re-register old marks from October 1, 2020, to October 31, 2023, which is called the Soft Opening Period (SOP). The IPD administers the registration of trademarks and for the smooth transition of the First-to-Use system to the First-to-File system, and the IP Department Online Filing system facilitates electronic submission of the re-registration applications.

The offenses under the Trademark Law (2019) shall be determined as cognizable offenses and punishable from at least one year to ten years or with a fine from at least 2,000,000 kyats to 10,000,000 kyats or with both according to their respective offenses. The term of a registered mark shall be 10 years from the submission date of the registration application, and after this period, the applicant may renew the term of registration for 10 years at a time within 6 months prior to its expiration date. 

Finally, the Trademark Law 2019 adopts from “first-to-use” to “first-to-file” system for trademark protection and the best way of protecting a trademark is to register it. Owners of a registered mark have the exclusive right to control who uses it: they can use it to identify their own goods or services, or license or sell it for someone else to use. The owner of a registered trademark can file civil and criminal actions against an infringer and the Intellectual Property Court can order interim injunction or permanent injunction against the infringer or removal from the market or destruction of the infringing goods or to pay compensation for the damage suffered by the owner. 

Prepared By: Su Sandar & Zin Mon Su