Draft Trade Mark Law of Myanmar

Draft Trade Mark Law of Myanmar August 2017 Content - Introduction to Myanmar draft trade mark law - Directorate responsible for the registration of trade marks - Eligible marks for registration - Criteria for registering marks - Registration procedure - Opposition action - Cancellation of trade marks on the ground of none use - Invalidity actions - Remedies against infringement o Administrative remedies (customs) o Civil remedies o Criminal remedies

Introduction to Myanmar draft trade mark law The draft trademark law ( Draft Law ) was published in Myanmar newspapers Kyay Mone and Myanmar Alinn from 8 th to 10 th of August 2017 for public comments. Overall, the Draft Law complies with the TRIPS Agreement. Regrettably, there is no procedure for automatically reregistering marks which are recorded under the current system. Therefore, all marks currently recorded would need to be re-filed and examined once the new law enters into force in order to gain protection in Myanmar. Furthermore, there is no provision addressing the potential conflicts between marks which are recorded under the current system and used in Myanmar and marks which would be registered under the new regime which cause legal uncertainty. The Draft Law is now being reviewed by the Draft Law Committee of the Parliament. The Draft Law Committee may take one or more sessions to complete the review. The review may be completed by end of September 2017. If so, the Draft Law will be discussed and eventually voted by the National Assembly and Senate by the end of 2017 or early 2018. If the Draft Law is approved by the Parliament, it will then be sent to the President of Myanmar for his signature. A bill signed by the President will need to be published in the official gazette. Finally, the bill becomes a law on the day of publication itself. Myanmar would move from first to use to first to file system (Section 16 (a)). The priority right claim would also be introduced (Section 28 and 29) and well known marks would also be recognized (Section 11). The Draft Law provides for civil and criminal remedies. It also allows customs seizure against importation and possibly exportation of counterfeited goods. A right holder, whether his mark is recorded or not with Myanmar Customs Office, would be entitled to file a request to Customs to issue a suspension order against imported or likely to be imported counterfeit goods (Section 66). Directorate responsible for the registration of trade marks A directorate would be established under the Ministry of Education responsible for registering trademarks including examination, publication, grant, renewal and cancellation of trade marks. The Draft Law is silent on the location of the Directorate. However, from past discussions with the Ministry of Science and Technology ( MOST ) it is understood that the headquarter will be in Naypaydaw and there would be two branches in Yangon and Mandalay.

Eligible marks for registration The following marks would be eligible for registration; trade marks, service marks, collective marks and certification marks. Geographical indications would also be protected through registration under the Draft Law. The Draft Law recognizes international classification of goods and services (Section 14.5) which seems to indicate that Myanmar would officially adopt the Nice Classification, which is already in use (14 th edition). Criteria for registering trade marks The Draft Law provides absolute and relative grounds for rejecting trade mark applications: Absolute grounds (section 10) - The mark is not distinctive for the goods and services for which registration is sought; - The mark is descriptive, since it describes the goods or services, quality, quantity, intention of use, value, origin, production time or other characteristic of the products or services for which registration is sought; If a mark under the two above paragraphs is famous among customers, used in good faith, continuously, solely and exclusively by the applicant in Myanmar, then it may obtain protection under the Draft law. - The mark is against public order, morality, faith and conscience or venerated and cherished culture of a State of Myanmar; - The mark is generic; - The mark misleads the public or trade circle; - The mark is a total or partial reproduction or imitation of a flag or other emblem or hallmark indicating control or warranty adopted by a State of Myanmar without authorization from the competent authority; total or partial reproduction or imitation of the armorial bearings, flag or other emblem, acronym, name or abbreviated name of any State or organization concerned; - The mark contains prohibitions under other existing laws of Myanmar; - the mark contains a symbol which is protected under international agreements to which Myanmar is a member state.

Relative grounds (section 11) The relative grounds for rejecting a trade mark application are as follows: - Mislead customers though using a mark which is similar or identical to another registered mark and such similar or identical mark is used for similar or identical goods or services as to those of the prior registered mark; - Without permission of the relevant person or organization, using a mark affecting personality rights of a person or organization legally established; - Infringing industrial property rights of a third person; - Trade mark filed in bad faith; - The mark applied for registration is similar or identical to a well-known mark and identical or similar to the goods or services of such well-known mark and its use would deceive customers; - The mark applied for registration is similar or identical to a well-known mark for different classes of goods or services but related to the well known mark s goods and services, and its use would prejudice the interests of the well known mark owner; - Although the mark which is applied for registration is similar or identical to a wellknown mark for different class of goods or services, there is a likelihood that its use would affect the interest of the owner of a well-known mark. - Registration procedure There are 5 steps as follows: filing an application Formality examination Substantive examination Publication for opposition Grant, 10 years renewable Section 12 Section 14 Section 20 Section 22 b Section 25

The application of registration of trademark can be applied in either Myanmar language or English language. It is only required to provide a translation in Myanmar or English upon the Registrar s request (Section 13). A trade mark application shall contain the following information and documents (section 14). - Request form for filing a mark; - Name and address of the applicant; - if the application is filed by a representative it is required to provide the name and address of the representative; - Particulars and description of the mark; - Class and list of goods and/or services in accordance with International classification; - If the applicant applies for registration on behalf of an organization, the registration number, type, and country of such organization must be submitted; - If a priority right is claimed by the applicant, a request letter for priority claim shall be submitted together with evidence of prior application/registration; - If a right of exhibition priority is claimed, a request for exhibition priority claim together with the supporting evidence and statement that there is an exhibition priority right shall be submitted; - if a mark for which registration is sought is already registered at the office of the sub- Registrar of Deeds and Assurance, the applicant shall submit a certificate (duly registered DOO) of such registered mark; - Other required facts or information which may be issued by Department from time to time. In case of similar or identical marks filed by more than one applicant on a different filing day, the applicant of the earliest filed mark shall enjoy the right to registration (section 16 (a)). The priority right or exhibition right which is requested by more than one applicant on a different filing day, the earliest priority or exhibition right applicant shall enjoy the right to registration (Section 16(b)). Opposition action Any person would be entitled to file an opposition to the Registrar within 60 days from the date of the publication of a mark based on sections 10 and 11 (Absolute and relative

grounds) (Section 23). If no opposition was filed within the prescribed period the mark would be accepted for registration subject to the payment of registration fees (Section 25). Cancellation of trade marks on the ground of none use Upon a request from an interested party, the Registrar shall cancel a registered mark in case of non use for 3 consecutive years commencing from the date of registration without any good reasons given by the trade mark owner (Section 49). The burden of proof to establish the use of a mark in Myanmar lies on the trade mark owner and include evidence such as proving the actual period of use, nature and field of use (Section 49.c). Acceptable evidence of use include use of a mark in a different format/stylized letters without changing the key characteristics of the registered mark (Section 49 b.1). Invalidity action There are two grounds for invalidation of marks as follows: Grounds Parties Sections of the Draft Limitation period Legal requesting the Law forum invalidity Absolute grounds An interested party Sections 2.G, Section 10 The invalidity action can be filed at any time during the validity period of a mark to cancel Registrar Section 48 d) Relative grounds An interested party Section 11 The invalidity action shall be filed within 5 years from the registration date of a mark. Registrar Section 48 d.2) Remedies against infringement The Draft Law provides for administrative, civil and criminal remedies against infringement. Administrative remedies Administrative remedies are customs actions under Sections 66 to 74 (Chapter 20).

A right holder, whether his mark is recorded or not with the Customs Office, is entitled to file a request to Custom Office to issue a suspension order against the importation of counterfeit goods or goods likely to be imported into Myanmar (Section 66). The Custom Officer shall respond within 30 days to the right holder s request for a suspension order whether such application is acceptable or not (Section 67.a.1). If the application is rejected, Customs shall provide clear explanations (Section 67. a.4). The Customs may request the right holder to pay a deposit to support his claim for suspending the importation of goods (Section 67.a.3). The validity period for the suspension order request is of 6 months maximum (Section 67.b). After customs officers receive an application for suspending goods and eventually find that the goods are suspicious, they will suspend them to allow their verification by informing the applicant and the importer (Section 68.a). The customs shall allow the applicant and importer to examine the suspended products, to prove they are counterfeits or not (Section 68 b). Following a suspension order granted to the applicant, in case there is no verification within 10 working days, customs would release the goods (Section 69.a). The applicant can request another 10 working days extension. For perishable products, the time frame to conduct the verification is 3 days without further extension. After receiving a suspension order, the importer can file a counterclaim to the Court to review the suspension order. The Court shall decide within 20 working days to confirm or revoke the suspension order. - if the Court decides that the goods are counterfeits, the importer shall pay for all moving and storage costs of the suspended goods at the Customs Office and also their costs for destroying such goods. If the importer is unable to pay, the applicant shall pay for those costs with the possibility to reclaim expenses against the importers (Section 71). - if the Court decides that the suspended goods are not counterfeits, the applicant shall pay damages to the importer as specified by the Court.

Counterfeit goods imported not for commercial purposes or imported for personal use or small consignment, small quantity will not be suspended by Customs (Section 73). Cooperation with international customs authorities to prevent counterfeit products, including sharing information is also available. (Section 74).

Suspension order flowchart Application for suspension order Reject Examination the application Accept Additional 10 days for additional information 30 days Accept/ Reject 30 days Inform to the applicant Accept Deposit Validity for 6 months Issue suspension order once the suspicious goods are found Release the goods 20 days maximum or 3 days Inform to the Customs relating to the delay at the court for temporary injunction or initiating to take action Compensation to the importer if the goods are not counterfeit Court Decision Destroy or remove or keep the counterfeit goods

Civil remedies Temporary injunctions are available covering customs seizure and civil actions (Sections 75, 77 & 78). Under Section 75.b any aggrieved person may take civil or criminal action for the infringement of a registered trade mark. The Court can order to the infringer to pay the damages, court fees, lawyer fees and appropriate other disbursements for aggrieved party (Section 79 (2)). Criminal remedies Remedies for removing or destroying of goods and articles relevant to infringement from the trading market without claiming any compensation is also available (Section 79.3 and 4). The Court may request the infringer to provide the aggrieved party with details on the origin or source of the counterfeit goods, (Section 84). If the infringer fails to comply with the Court order, he may be imprisoned for a period not exceeding 6 months, or a fine not exceeding 1,500,000 Kyats (Section 94). Whoever commits any of the following acts shall be punished with imprisonment for a term not exceeding 3 years or with fine not exceeding 5,000,000 Kyats or both: (Section 86) - Forgery, imitation or making of another person's registered mark; - Using forged mark for any goods or services; - Marking or keeping in possession of any instruments or articles to forge or imitate a mark; - Selling, distributing of goods using a forged mark; - Exporting or importing of goods using a forged mark. Any disputes can be settled though arbitration or conciliation.