Under Myanmar’s new law, any existing Cautionary Notices must be refiled as trademark applications within the first few months of 2020 or risk losing their priority.
Key Changes
Myanmar passed a law earlier this year updating its trademark system to replace the current statutory declaration framework and to implement certain key changes to the existing trademark system. In order to maintain priority, all existing Cautionary Notices must be refiled within a transition period, which is expected to begin on December 20th and last for three to four months. Owners of unregistered marks that are in use in Myanmar may also file applications during the transition window. After the expiration of the transition period, Cautionary Notices will no longer have any effect in Myanmar, and the Trademark Office will accept applications from any applicant under a first-to-file system. Accordingly, during the transition period, the failure to reregister Cautionary Notices or to file applications for marks that are in use could result in a loss of priority or even rights in Myanmar.
The new trademark law incorporates a fairly standard examination and publication procedure and allows for third-party oppositions. Registrations will be effective and due for renewal every 10 years. Third parties can also apply to invalidate a registration or cancel for three consecutive years of non-use. In addition to filing new applications, trademark owners must also record third-party licenses in order for the licenses to be effective in Myanmar. The new Trademark Law also establishes grounds to file criminal and civil actions against the infringers before the Intellectual Property Rights Court, which can impose fines or prison time up to 10 years, and allows owners to record their marks with customs to prevent the importation of counterfeit goods.
Next Steps
In light of these upcoming changes in Myanmar, companies with existing Cautionary Notices or unregistered use should begin the process to file new applications during the transition window, starting December 20th. Applications based on Cautionary Notices must include the original stamped Declaration of Ownership. Companies may also want to audit their marks to identify unregistered marks that are in use in Myanmar and to collect evidence of use to support any possible priority disputes.
