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Trademark

Summary
  1. Legislation:Myanmar has no promulgated law for trademarks, but registration can be obtained under Section 18(F) of Registration Act. Remedies against passing-off can be applied for under Section 478 of the Penal Code, and against infringement under Section 54 of the Specific Relief Act and the Myanmar Merchandise Marks Act.
  2. Definition:“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. “Trade Mark” means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person.
  3. Criteria: In Myanmar, there is no Trade Mark Act up to the present moment. Myanmar Penal Code, Section 478 however provides that – “A mark use for denoting that goods are the manufacture or merchandise of a particular person is called a Trade Mark”. “The mark must be ” distinctive” in the sense of being adapted to distinguish the goods of the proprietor of the TRADE MARK from those other persons.
  4. Membership: X – Paris Convention X – Madrid Protocol
  5. Eligibility: Applicant must be a proprietor of the mark. Proprietorship of a trademark is acquired by means of registration or use or both. A foreign applicant is required to nominate a trademark attorney in the company he wishes to declare the mark.
  6. Rule of Priority:“First to Use” is the rule followed by Malaysia in determining priority of trademarks.
  7. Duration and Renewal:In Myanmar, the law does not enact the validity period of Trademark registration. According to the established practice, renewal of registration is usually done once in every three-year by one of the following ways:- - Renewal by re-registration in the form of Declaration - Renewal by re-publication in the local daily newspapers or weekly journals - Renewal by both re-registration and re-publication.
Procedure/Timeline
  1. Declaration of Ownership This is a solemn statement made by the owner of a trademark. A trademark can be registered on submission of a declaration of ownership.
  2. Registration A local attorney will file for the registration of the Declaration of Ownership at the office of the Registrar of Deeds and Assurances. A temporary registration number will be granted on the same day although it takes 2-3 weeks for the attorney to receive the declaration.
  3. Examination An examination takes 6 – 8 months.
  4. Publication Publication follows registration of a mark and is optional to the owner. A trademark cautionary notice is published in local newspapers establishing ownership of the trademark. It serves as a warning to potential infringers.
  5. Duration and Renewal The duration of registration takes a minimum period of 2 months. The registration is effective from date of application.
Requirements
The following information and/or documents are required to file an application for a trademark application in Myanmar:-
  1. Application form.
  2. Power of Attorney.
  3. Five (5) clear copy of the mark.
  4. A list of goods or services (which closely follow the Nice International Classification).
  5. The full name, nationality and registered address of the applicant.
  6. For marks that contain non-English words, a certified transliteration and translation.
Documents
Basic Requirements
Documents Remarks Time of filing
Declaration of Ownership of the Trademark Signed, notarized & legalized Within 4 months from the date of execution of the Declaration
Within 4 months from the date of execution of the Declaration Signed, notarized and the signature and seal of the Notary in turn must be attested by Myanmar Embassy in the country concerned Within 4 months from the date of execution of the Declaration
Priority Claim Myanmar is not a member to any of convention. It is therefore not possible to claim convention priority for filing a trademark application in Myanmar.
Documents for Filing a Request of Recordals of Assignments and Changes
Documents Remarks Time of filing
Deed of Assignment signed by the Assignor and the Assignee. Signed, notarized and the signature and seal of the Notary in turn must be attested by Myanmar Embassy in the country concerned Within 4 months from the date of execution of the Declaration
Power of Attorney in the name of the Assignor. Signed and notarized Within 4 months from the date of execution of the Declaration
Power of Attorney in the name of the Assignee. Signed and notarized Within 4 months from the date of execution of the Declaration
Documents for Filing an Opposition
Unlike other countries, no opposition practice is available with the Registry Office in Myanmar. The registration is between the applicant and the Registrar. In case of oppositions, one can maintain a law suit before the court. In Myanmar, an owner of trademark in respect of particulars commodity has no right to prohibit or prevent other persons from use of such mark in connection with goods of a totally different character and class.
Downloadable Forms
1. Power of Attorney (Individual) Download
2. Power of Attorney (Corporate)Download
3. Declaration of AssignmentDownload
Fees
Items Official Fees (USD) Professional Fees (USD)
1. Search 30 240
2. Filing application 200 390
3. Publication Each column/cm/in a) Myanmar Times: USD 30 b) Weekly Eleven Journal: USD 40 c) Myanmar Today Business Journal : USD 15 120 255

Patent & Design

Summary
  1. Legislation: The Myanmar Patent and Design Act was issued in 1995 but never came into effect. The law was subsequently repealed. The 1946 Patents and Designs (Emergencies Provisions) Act (Emergencies Act) remains on Myanmar’s statute books, although it is essentially defunct as its main purpose was to apply Indian Patents and Designs Act of 1911. Since the India Act was never listed in the Myanmar Codes, there is effectively no patent and design law in Myanmar. Meanwhile, the Attorney General Office under the assignment of the Government has already drafted the new Patent Law and Industrial Design Law in compliance with the TRIPS Agreement due to the fact that Myanmar is a member of WTO, ASEAN, and at the least, WIPO in 2001. In this interim period, patent/design may be registered under section 18(f) of the Registration Act.
  2. Patentability Criteria: A patent has to fulfill the following conditions in order to claim protection.
    • it is new
    • it involves an inventive step
    • it is industrially applicable
  3. Non-Patentable Subject Matter: An invention is not patentable if it contains the following:
    • discoveries, scientific theories and mathematical methods,
    • plant or animal varieties or essentially biological processes for the production of plant or animals,
    • schemes, rules or methods for doing business, performing mental acts.
  4. Utility Solutions: N/A in Myanmar
  5. Membership: √ – WTO √ – Paris Convention X – Patent Cooperation Treaty (PCT)
  6. Rule of Priority:Priority claim is not yet available in Myanmar Registration system.
  7. Duration and Renewal:In Myanmar, the law does not enact the validity period of a patent registration. According to the established practice, renewal of registration is usually done once in every three-year by one of the following ways:- - Renewal by re-registration in the form of Declaration - Renewal by re-publication in the local daily newspapers or weekly journals - Renewal by both re-registration and re-publication.
Requirements
The following information and/or documents are required to file an application for a patent in Myanmar:- Direct National Application
  1. Application Form:-
    1. the name, address and nationality of the applicant;
    2. the name, address and nationality of the inventor;
    3. a specification comprising a description, claims and any necessary drawings; and
    4. the country and filing particulars of basic application whose priority is claimed.
  2. Appointment of Patent Agent
  3. If the applicant is not the inventor, a statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment.
  4. There is no requirement for the filing of an assignment from inventor to applicant.
Procedure/Timeline
  1. Declaration A patent owner is required to submit a declaration containing solemn statement of facts to the Registry of Deeds and Assurances.
  2. Registration A patent is registered on submission of the declaration by the owner.
  3. Publication Publication of cautionary notices in designated local newspapers serve to avoid possible infringements and passing off actions.
  4. Protection There exists no procedure for the protection of patents per se.
Downloadable Forms
1. Power of Attorney Download
2. Declaration of Ownership Download
Documents
Basic Requirements
Documents Remarks Time of filing
Declaration of Ownership of Patent Signed and notarized If it has already been registered elsewhere (i.e. US Patent Application No), its registration number and the country, the detailed background of the invention must be attached with Declaration. On filing date
Additional Documents for Convention Patent Application
Documents Remarks Time of filing
Power of Attorney Signed and notarized. The signature and seal of the Notary in turn must be attested by Myanmar Embassy in the country concerned On filing date
Fees
Patent Application
Items Official Fees (USD) Professional Fees (USD)
1. Filing Patent Application 100 150
2. Examination 370 250
3. Issuance Fee 200
Industrial Design Application
Items Official Fees (USD) Professional Fees (USD)
Filing Design Application 9 270
Maintenance Fees
Items Official Fees (USD) Professional Fees (USD)
2nd annuity 70 150
3rd annuity 85 150
4th annuity 100 150
5th annuity 120 150
6th annuity 135 150
7th annuity 150 150
8th annuity 170 150
9th annuity 190 150
10th annuity 200 150
11th annuity 220 170
12th annuity 235 170
13th annuity 270 170
14th annuity 300 170
15th annuity 335 170
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