As the cost of labour in China continues to rise, foreign manufacturing companies are being lured by cheaper production costs and increasingly favourable political and economic conditions in South East Asia. As a consequence, the Myanmar economy is ascending an incline of impressive growth.
In an effort to sustain and facilitate further economic growth, the Myanmar government has been working for some years to establish a ‘business friendly’ legal framework. A key component of this is the new Trademark Law, anticipated for roll out in 2017 which will bring Myanmar’s IP laws into line with the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.
Proposed changes under the new Trademark Law
Under the current regime no specific laws or statutes dealing with trademarks exist, and businesses must rely on the Penal Code and Private Industrial Enterprise Law to enforce their rights. The new laws however, will implement a more formalised process for the registration and enforcement of trademark rights. Some of the features include:
- Formal registration – The new registration system will recognise trademark owners on a first-to-file basis. This means that irrespective of prior use, it is possible for someone else to validly register your marks before you and prevent you from using them. Foreign businesses may apply to register trademarks under the new rules, however their application must be made through local agents.
- Broader definition of ‘Trademark’ – A liberal definition of ‘Trademark’ will be adopted which will include sounds and smells in addition to traditional marks. Collective trademarks, certification trademarks and series marks will also be possible.
- Stronger enforcement – Special IP courts will be established to administer civil and criminal penalties (including prison sentences of up to 3 years) for trademark infringements. Trademark owners will also have access to court injunctions and customs detention or suspension orders to prevent the import or export of infringing merchandise.
- Transitional Laws – Businesses who hold marks under a “Declaration of Ownership” under the current system must re-register under the new framework within three years of commencement.
What the changes mean for trademark owners
Whilst it will be necessary for all business owners in Myanmar to register or re-register their marks when the new regime comes into effect, the first-to-file rule will create a level of urgency for those wishing to enter the Myanmar market or those wishing to maintain their rights under the current system.
The new laws will however improve business conditions for foreign investors by affording them greater powers to protect their trade marks against infringement.
What action should trademarks owners take now
Foreign business owners in Myanmar must be ready to apply immediately upon commencement of the new laws or risk losing rights to their trademarks. We recommend that investors with business interests in Myanmar start reviewing their trademark portfolios now to decide which marks they will register/re-register and have their affairs in order to apply upon commencement of the new regime in 2017.