Myanmar Commences Opposition Process under Trademark Law 2019

Last year, we covered on the process of Myanmar’s new trademark registration system pursuant to its Trademark Law 2019. For an overview to the new trademark registration system and its comparison to the old registration system, please see?https://www.dhirubhai.net/posts/marks-%26-clerk-singapore-llp_trademarks-myanmar-intellectualproperty-activity-7100687885850353664-oNNw?utm_source=share&utm_medium=member_ios.

Earlier this month on 1 May 2024, the?Department of Intellectual Property of Myanmar (“DIP”) released its first trademarks journal comprising 220 trademarks which were examined and accepted by the DIP. An opposition may be filed against any of the published trademarks within 60 days of the release of the trademarks journal, i.e. by 1 July 2024. In the event that no opposition is filed within the said 60-day period, the published trademarks will proceed to be registered. It has not been made clear on when the next trademarks journal will be released, but we anticipate the release to be done on a monthly/ bi-weekly basis.

Amongst possible grounds that an opposition may be filed for include that the published trademark:

?lacks distinctiveness;?

?is descriptive of the goods and/or services that the trademark is filed to protect;

?may mislead or cause confusion within the public and trade in Myanmar;

?is identical or similar to another trademark with an earlier right and is filed to protect identical or similar goods and/or services (this includes well-known trademarks); and

?is filed in bad faith.?

Upon receipt of an opposition by a third party, the DIP will notify the applicant of the published trademark and the applicant is then afforded opportunity to raise defence arguments. The DIP will then make a decision whether to allow registration of the published trademark. An appeal against the DIP’s decision may be taken with the Intellectual Property Rights Agency and a further appeal with the Intellectual Property Rights Court, if required.

For brand and business owners with presence in Myanmar, it will be good to look out for any filed or published trademarks which are similar to yours and take swift actions against these trademarks. Filing an opposition against a published trademark before it is successfully registered is a preferred course of action, as compared to filing an invalidation or cancellation action against the trademark only after it is registered. The latter is generally a more complex procedure and can be costlier.?

If you have any queries/ require assistance with trade mark filing and protection in countries within Southeast Asia, please feel free to contact our experienced team of trade mark professionals - Gerald Samuel (our Head of Trade Marks Department), Tat Wai Kwok or Kimberly C. at?[email protected]?who endeavour to provide the best services to you.

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