On 10 March 2023, the Department of Intellectual Property of Myanmar ("DIPM") issued Notification 82/2023 that the new Trademark Law (2019) will come into effect starting 1 April 2023.
DIPM has also announced that the new online trademark filing system will be officially open on 26 April 2023. New trademarks, transfers and licences must be registered under the new system, as unregistered transfers and licences are void. Mark owners who (i) registered a paper-based declaration of ownership with the Registration of Deeds Office or (ii) can otherwise prove use of their mark in the country prior to 1 April 2023, may apply for (re-) registration under the newly created online filing system before 1 April 2023. Owners of existing marks who have not yet applied for (re-) registration under the newly created online filing system may still be able to do so within six months from the grand opening date (rule 12 of the Mark Registration Rules), i.e., until 26 October 2023. Owners of new marks will be able to apply for their registration from the grand opening date on 26 April 2023.
Compared to the old paper-based mark protection system, the new online trademark registration system is compulsory. The registered trademarks are protected for 10 years and can be renewable. Transfers and licensing of the trademarks shall only be valid if registered, with at least 60 days required for registration. Further, cautionary notices will no longer be needed.
In addition to the above, there is also an avenue for an opposing party to file a form called "Opposition for Registration of the Mark (TM-8)" in the following instances: (i) in case of a dispute where the mark does not meet the definition of a mark; (ii) there is a ground for rejection which was overlooked during the initial examination by the Trademark Office; or (iii) there is a relative ground for rejection such as identity or similarity with an earlier mark, mark causing reputational damage or a mark which violates a person's intellectual property rights. The applicant who filed the trademark is given the opportunity to file a defence against the opposition.
In this regard, the Union Supreme Court issued various notifications to confer jurisdiction over intellectual property ("IP") disputes to various courts.
- Yangon Region High Court has jurisdiction over civil miscellaneous applications made by a person who is not satisfied with the decisions of IP Agency and Customs Department.
- Kyauktada District Court in Yangon Region is a special IP Court for Myanmar to decide TM infringement cases.
- Other Districts-level Courts have jurisdiction over criminal complaints for offences under the IP laws.
The Union Supreme Court also issued a notification setting out the procedure to be followed in IP disputes before the Courts.
