Updates on Myanmar IP Chadd Concepcion 6 August

Updates on Myanmar IP Chadd Concepcion | 6 August 2019

Agenda 1 STATE OF AFFAIRS 2 NEW IP LAWS 3 TRADEMARK 4 STRATEGY 5 QUESTIONS

1 Current State of Affairs

Treaties x x Design Patent i Copyright Trademark a WIPO r Berne r Paris a TRIPS r PCT r Madrid

Trademark Declaration of Ownership Cautionary Notice POA (Notarized and legalized) reusable Constitutes use of mark Declaration (Notarized) multi class • • • Confers ownership No examination Some marks cannot be registered (Ex: religious symbols) No expiry Customarily renewed every 3 years Declaration is prima facie evidence of ownership

Copyright • Protection limited to works created in Myanmar, or made by Myanmar citizens • Limited kind of works protected (1914 law) • No voluntary registration • Limited to copyright

2 New IP Laws

Trademark Industrial Design Patent Copyright • January 2019 • Replaces Registration Law • January 2019 • No previous law • February 2019 • No previous law • May 2019 • Replaces 1911 Copyright Act LAWS NOT YET IN EFFECT IP Department to be established Est. Q 2 2020

IP Laws in Brief Copyright • Protects foreign work • 50 y • MM not Berne Convention CP (but TRIPS) Industrial Design • First to file • 5 y (+5 +5) 15 max Patent • • First to file Petty/Design Patent 20 y MM not PCT CP

3 Trademark

Approval Publication Application Registration Certificate (10 y) 60 -day opposition window Formal Examination Cancellation 3 y non-use

Details we know § § § § § All existing trademarks must be re-registered Existing registrations can be used to support new re-registration Applications can be in English (unless examiner requests Myanmar) Priority right will be available (eventually) Nice Classification will be adopted Well-known marks to be recognized (but likely no registry) Geographical Indications will be available Recordals will be available Licensing of trademarks require recordal

Details unconfirmed § Transition Period (common filing date for unspecified period of time) § Publication will be in-house § Applications will be acceptable in Yangon, Naypyitaw and Mandalay § Examiners are being trained § DG has been unofficially appointed

Details unknown § Documents for registration § POA? § Fees (Professional and Official) § Online filing § Timeline ~ Q 2 2020

4 Strategy

File Marks never registered or published in Myanmar Marks registered more than 10 years ago Registered, but not in the name of owner (assigned marks) Wait Marks for renewal but registered in the past 10 years BUT publication of CN is ideal Recordal of change to details of owner Cancellation

How to prepare • Audit portfolio • Prepare existing all original DOs and CN publications • Anticipate POA (to be legalized)

Expectations 1 -3 years 2 -5 years 5+ years • Applications • Oppositions • Cancellations • Enforcement

Questions

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