27 Jan
MYANMAR has been working with the World Intellectual Property Organization (WIPO) since 1997 for ensuring the implementation of a new system of intellectual property right, which is capable of meeting international criteria. Myanmar became the 176th member country of WIPO in 2001. The Ministry of Science and Technology previously formed under the Ministry of Education is an organization that made the collaborative effort with the Office of Union Attorney-General to ensure provisions of intellectual property rights meeting international criteria are enacted. With regard to the amendment and the enactment of copyrights, patent rights, industrial design rights and trademark rights, local intellectual property right experts and legal compilers met to discuss legal subject matters for several times.
The intellectual property bills were submitted to the parliament in 2014 and trademark law and industrial design law could be amended following the discussions with the bill committee at Pyithu Hluttaw in 2015. The IP bills were re-submitted to the parliament in 2016 during which discussions were held with the bill committee at Amyotha Hluttaw and Pyithu Hluttaw. The suggestions of relevant ministries, legal experts and the people were taken into consideration when the bills were drafted. Pyidaungsu Hluttaw managed to enact the laws of copyrights, patent rights, industrial design rights and trademark rights in 2019.
In an attempt to implement the already-enacted IP laws, one law after another would be applied. In doing so, the difficulties would be able to be reduced and enough time could be acquired to fulfil the need of human resources and carry out the amendments, thereby overcoming the technical barrier that can face in electronic registration (E-registration).
Trademark Law
Of the four IP laws, the Trademark Law was aimed for the implementation first. Myanmar Trademark Law was signed into law by the president on 30 January in 2019 in accord with the Law No 3 of Pyidaungsu Hluttaw. The responsible ministry for the implementation of the Trademark Law is the Ministry of Commerce. The Central Committee of Intellectual Property Rights, the Intellectual Property Rights Agency and the Department of Intellectual Property Rights had to be formed under this Trademark Law. Under the Notification No 18/2020 issued by the Union Government on 6 March in 2020, the Central Committee of Intellectual Property Rights was formed with Chair (Vice-President-2), Vice-Chair (Union Minister for Commerce), and Secretary (Deputy Minister for Commerce) and four experts on intellectual property rights and members of relevant ministries totalling 31. The first meeting of the Central Committee of Intellectual Property Rights was held on 3 June in 2020 during which future tasks could be approved for ensuring the implementation of the IP laws. The Department of Intellectual Property Rights prepared for rules and regulations as well as duties necessary for the formation of the Intellectual Property Rights Agency
The rules of the by-law, application form, registration fee and trademark inspection and guidance on applicants of intellectual property right are in preparation. The employees who inspect electronic registration through IT systems, website and trademark right applications must be given educative training. The information about intellectual property rights must be distributed to the public. Internal and external IP organizations must work together under the guidance of the Ministry of Commerce.
Myanmar doesn’t currently have a special system for inspecting trademark registration. According to the term of ‘first come first served’, the system of ‘First to Use’ is operational in the market. The trademark owners can register their trademarks in accord with Registration of Deed Law at the Settlement and Land Records Department. The applications have to be submitted according to the procedures, but no trademark is inspected. The trademark owner has to announce the trademark caution in the daily newspaper, inviting any objection to the trademark along with the specific time frame. If there is no objection, the registered trademark can be officially used for a product or a service. To do so can be regarded as a proof that means the owner of the registered trademark. If there is a trademark dispute, it can be used as evidence
The Trademark Law 2019 was drafted based on basic norms described in the Agreement on Trade-Related Aspects of Intellectual Property Rights TRIPS. This law offers a chance to the person who first applies, which means the First-to-File system. It is, therefore, necessary for the owner of the trademark to register the trademark at the earliest. Anyone can apply for the registration of a trademark at the Department of Intellectual Property Rights under the Ministry of Commerce if trademark rights are wanted, whatever trademark old or new is registered.
Trademark registration
The trademark owners will have to strive for the First-to-File system to be able to quickly apply for trademark registration on the first day when application forms start to accept. A number of trademarks applied for official registration at the Department of Settlement and Land Records are almost 200,000, more than half of them are expected to be re-applied for registration. The trademarks without registration that are being used in the market are many. Therefore, the trademarks without registration being used in the market should apply for an official registration so that they will be able to compete in the future market
Many applications can be received on a date for acceptance of applications. Information technology is required in order to accept a large number of applications within a single day. IT systems such as Industrial Property Automation Software (IPAS) and WIPO File will be used. The WIPO will provide IPAS software and technical assistance. In addition to the assistance by the government, server, computer and related parts are being installed with the help of the USAID and the JICA.
IPAS software is a system providing members of WIPO, and it is operational in ASEAN member countries such as Cambodia, Laos, Viet Nam, Indonesia, the Philippines and Brunei. This system helps to carry out the submission of the application of trademark registration, inspection, feedback response and release of the registration document. IPAS software to be used for Myanmar’s registration is based on trademark registration processes. The use of IPAS software helps the submission and inspection of intellectual property right registration, and it can also keep and release the information in a systematic manner.
Application for marks
Mark means any visible mark, which includes names, letters, numbers, illustrated parts, or combinations of colours, or one such mark combined with another, in order to distinguish a particular good or service from other goods or services. It includes trademark, service mark, collective mark and certification mark. The mark that can be seen on the product is the trademark, for example, Fame. Some marks can be seen in the services, and they are called a service mark, for example, KBZ bank. Some marks are collective ones, for example, UMFCCI. Some are certification marks, meaning that they show the quality and reputation of the goods or the service of the mark, for example, organic product.
Intellectual property right application can be made in person or by a representative. Trademark can be applied by filling up the application form. Trademark can also be applied being attached with the recommendation letter of the representative. The application can be stated either in Myanmar or in English. The information must be complete with fixing the filing date, and the data filled up the application form must be true. The date on which the Department has received a complete application is deemed as the date of submission of the application for registration. The Department of Intellectual Property will send the inform letter to the IPR applicants if incomplete application forms are found. In connection with the incomplete application forms, the applicants have to make amendments to the application within 30 days from the date on which the inform letter is received. If not so as per instruction, it will be regarded as disqualified application
Article 16 and 17 contained in Chapter 8 of Trademark Law states any requirement to acquire the filing date and enjoy the rights of the registered mark.
The applicant for the registration of a mark may write the registration application in Myanmar or English, must translate the Myanmar language application into English or vice versa if the Registrar requests so, and must write a statement that the translation under subsection (b) is true and correct and sign it. The applicant for the registration of a mark shall include the following in the application: (1) an application for registration; (2) name and address of the person or legally formed organization applying for registration; (3) name, citizenship scrutiny card number, and address of the agent or representative if the applicant entrusts an agent or representative with this matter; (4) a clear and complete description of the mark.
It is very important to be a complete application form because the date on which the application form is submitted will be regarded as the filing date. If the registration of a mark is submitted to the Office of Registration of Deeds, the documents related to the registration will be required for submission. The right of priority is stated in Chapter 10 of the Trademark Law. If the right of priority is demanded, it is required to submit the registration of a mark attached with the strong documents.
With regard to the right of priority of registration of a mark in accord with the article 19 (a) and 20, if the number of applicants who submit the registration of similar marks is more than one person, only the first applicant who has submitted an application that meets stipulations to register his mark must be prioritized. If more applicants request the registration of identical or similar marks on the same date, or if the right of priority dates is the same, this matter will be negotiated among the applicants. Only the approved applicant will get the right of registering a mark. If the applicants do not reach the agreement, they must follow the decision of the registrar using the prescribed method.
(TO BE CONTINUED)
By Dr Moe Moe Thwe TRANSLATED BY HTUT HTUT (TWANTAY)
