There is no automatic conversion of existing trademark registrations recorded under Myanmar’s old system into registrations under the Myanmar’s New Trademark Law. Instead, owners of marks that were previously registered with the ORD need re-filing trademark in Myanmar Intellectual Property Department (IPD) during the Soft-opening period in order to preserve their marks. According to Notification No. 63/2020, the Soft-Opening period began on October 1, 2020. This time period has not yet come to an end.
The following are some noteworthy points to keep in mind when re-filing trademark applications in Myanmar during the Soft-opening period.
1. Requirements for re-filing trademark in Myanmar
In line with the Notification No. 63/2020, the IPD not only allows for re-filing trademark in Myanmar recorded under old law, but also accepts marks that have been actually used for goods or services in Myanmar. Especially, if the owners of the recorded trademarks at ORD proceeded with assignment procedure or changed theirs name and/or address, they could re-file the marks with the current owners or current name & address. As a result, the following information and documents must be attached to applications:
- Specimen of the trademark in JPG. file with resolution at least 600DPI. Please be noted that the mark should be identical to the previous Trademark registered at the ORD.
- A list of goods and/or services in accordance with the International Classification;
- Scanned copy of Recorded Declaration of Trademark Ownership;
- Proof of the Trademark Notice posted in Newspapers or made known to the general public (if any);
- Proof of the Trademark being genuinely used within the State’s markets in case the trademark applications are re-filed based on actual used in the country;
- Proof of the marketing and promotion for such Trademark;
- Tax receipts or payment receipts;
- Other evidence;
- Company registration number and Legal Entity Type of the applicant;
- If the current Trademark owner is not the original person that registered at Deeds and Documents Registration Office, proof of the Transfer of Rights or name change of the Trademark owner is required;
If the trademark contains any words other than English or Burmese language, their transliteration and translation are required.
2. Disclaimer at the time of re-filing trademark in Myanmar
Although there is not yet any specific regulation about the disclaimer on any terms in the mark when re-filing a trademark application in Myanmar, the disclaimer section is showed on the application form. Meanwhile, the New Trademark Law states stipulates that a mark is non-registrable, if it lacks distinctiveness (descriptive), such as indicating the kind, quality, intended purpose, value, place of origin, the time of production of goods. Therefore, to avoid the possible office action and extra fees, it is recommended to disclaimer the exclusive right to use for these terms at the time of re-filing trademark in Myanmar.
3. Classifications of goods/services
When re-filing the trademark application in Myanmar through online platform, the system has counted quantity of goods/services items automatically and indicated clearly that the term with green highlight which have the basic code in the 11th Nice Classification is validated correctly. Thus, the items of goods/services in general terms need to be clarified with the specific items or items with the basic number in the Alphabetical List of the 11th Nice Classification.
4. Examination procedure of trademark application
According to the new trademark law in Myanmar, a mark will be examined as to formality and absolute ground. After that, if it meets fulfilled requirement as to formality and absolute ground, it will be published for opposition within 60 days. If there is no opposition, the IPO will issue a certificate of trademark registration. On the contrary, in case there is an opposition request, the mark will be re-examined as to both absolute and relative grounds.
More information about trademark practice in Myanmar can be found HERE.
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