News

Enactment of New IP Laws

by Sher Hann Chua (Tilleke & Gibbins – Myanmar)

Myanmar has finally enacted its long-awaited Trademark Law and Industrial Design Law on January 30, 2019, and its Patent Law was also signed into law on March 11, 2019. The Copyright Bill is expected to be enacted into law soon. A summary of the provisions of the new Trademark Law, Industrial Designs Law and Patent Law is provided below:

Trademark Law

To enjoy statutory protection under the new Trademark Law, all existing trademarks recorded in Myanmar must be registered under the new system. Under this first-to-file system, if two or more parties apply to register identical or similar marks on the same day, the Registrar will instruct the applicants to negotiate amongst themselves before intervening. Applications can be filed in the English or Myanmar languages, but translations must be provided upon request. The availability of multiple class applications is still unclear. Old Declarations of Ownership can be submitted at the time of filing to support the new applications. Registered trademarks will be valid for a period of 10 years from the filing date, and are renewable in perpetuity.

Notably, the substantive examination of applications will not be conducted on relative grounds of refusal. However, the law establishes a statutory publication period of 60 days for interested parties to file oppositions. The law also contains provisions governing the protection of Geographical Indications.

Industrial Design Law

The Industrial Design Law imposes a universal novelty threshold which must be met for industrial designs to be registrable. Registered industrial designs will be protected for an initial term of five years, calculated from the application date. Two further renewal terms of five years each can be filed. Applications for multiple designs can be filed for protection under a single application if these designs fall under the same Locarno class. If two or more parties apply to register identical or similar designs on the same day, the Registrar will instruct the applicants to negotiate amongst themselves before intervening.

Importantly, the law addresses the rights to designs created in the course of employment, allowing employees to claim the rights to such designs if an employer fails to file an application within six months from the date of written notification from the employee.

Patent Law

An invention is patentable under the new Patent Law if it is novel, involves an inventive step, and is industrially applicable. Priority under the Patent Cooperation Treaty or the Paris Convention can be claimed in Myanmar within one year from the date of the initial application. Unless a request for early publication is submitted, applications are published 18 months after the date of application, whereas requests for substantive examination must be submitted within 36 months from the date of application. Granted patents are valid for a term of 20 years from the filing date, while petty patents are valid for 10 years.

In accordance with the extended transition period for meeting obligations under the TRIPS Agreement for Least-Developed Country Members, the Patent Law contains special provisions exempting the protection of pharmaceutical patents until January 1, 2033, and the protection of chemical products used in agriculture, food products, and microbiological products until July 1, 2021, unless the Myanmar government specifies otherwise.

Current Status

Applications for registration under the new system are not yet available, as the administrative structures required are still being established. No timeline has been announced for the required implementing regulations and the establishment of the IP office, as well as the IP courts. Meanwhile, trademark recordals based on the old Registration Act are still accepted, whereas the recordals of patent and industrial design ownership have been suspended since July 2017.