25 Jan 2018
Intellectual Property Protection in Myanmar
IP rights are territorial in nature and registrations in Hong Kong are not automatically enforceable in another jurisdiction like Myanmar. Although Myanmar has been a WTO member since 1995, it is classified as an LDC and hence not required to apply almost any of the provisions of the WTO Agreement on trade-related aspects of intellectual property rights (TRIPS) until at least July 2021. Meanwhile, Myanmar does not have a dedicated IP office (only a section under the Ministry of Education) and its legal framework for IP rights does not meet international standards and thus offer inadequate protection for foreign investors.
Against the background, the NLP-led government is currently reforming its outdated IP regime. The Ministry of Education, Science and Technology (MOEST) has prepared four draft IP bills – the trademark law, industrial design law, patent law and copyright law – in co-operation with the Union Attorney General’s Office and other government ministries. These laws were submitted to Parliament for promulgation before the end of 2017. After enactment, the body of implementing regulations will take a further three to six months to pass. It is expected the new IP laws will create a simple and cost-effective system of IP registration. Besides, the Myanmar Intellectual Property Office (MIPO) will be established to oversee operations under the new IP laws.
The tables below provide an overview of the current situation for the main IP rights (patents, designs, trademarks and copyright). Hong Kong companies investing in Myanmar should be alert to the new IP laws, and in particular when they are due to come into effect, as action will be required to ensure IP in Myanmar is protected. For example, the draft trademark laws are expected to adopt the first-to-file rule (similar to Hong Kong's trademark law), meaning that foreign brand owners currently doing business in Myanmar, or intending to in the future, will need to be prepared to apply to register their trademarks as soon as the new laws are effective; failure to do so could result in losing the right of their IP.
Overview of Prevailing IP Rights in Myanmar
Patents and Designs
There is currently no law in operation on patents and industrial designs, and the draft patent and design laws are pending parliamentary approval. This means that production, commercial use and trade in goods are possible without the explicit permission of the right-holders, some of whom may hold the patents or design rights outside Myanmar.
While there is no law that specifically covers the registration of industrial designs in Myanmar currently, registration is nonetheless acceptable under the same procedure as that for trademarks. In order to seek protection, it is advisable to protect brand reputation and goodwill with trademarks. Owners of design rights may also seek to rely on “passing off” in enforcing their design rights in Myanmar, although this has largely been untested in the courts.
The registration framework for designs will be a typical first-to-file system and registrability will be assessed on the basis of novelty and distinctiveness. A design is deemed novel if it has not been displayed, used, published, or exhibited prior to the filing of the application.
A law on trademarks is pending in the parliament and there is no law on registration of trademarks in Myanmar (other than the Burma Copyright Act 1914). While the Penal Code 1860 defines a trademark as “a mark used for denoting that goods are the manufactured merchandise of a particular person”, it provides little guidance or protection. References to trademarks can also be found in laws including the Criminal Procedure Code, Private Industrial Enterprise Law and Merchandise Marks Act.
Despite a lack of trademark registration legislation in Myanmar, a customary practice has been developed by which a trademark owner may make a Declaration of Ownership with the Office of Registration of Deeds in Yangon or Mandalay under the Registration Act 1908. Once the declaration is registered, it is customary and advisable to publish a Cautionary Notice in local newspapers informing the public not to infringe that trademark. In the event of infringement, foreign or domestic marks owners can present the declarations to the authorities to enforce their rights. It is also advisable to contact an attorney in Myanmar to assist with trademark registration and related processes.
Copyright for written work, film, music or software is protected by the Burma Copyright Act (1914) and are protected for the lifetime of the author or creator plus an additional 50 years after death.
There is no mandatory registration in Myanmar, with copyright protection automatically provided upon creation of a recognised work. While foreign copyrights are not recognised in Myanmar at present, the recognition of foreign copyrights is likely to be included in future copyright laws with protection covering works created by nationals of members states being signatories to treaties, agreements or conventions related to copyright to which Myanmar is a member.
If an author or right owner wishes to register their copyright after enactment of the new copyright law, they may file an application with the MIPO following its establishment. In the event of copyright infringement, they can pursue administrative, civil and/or criminal action.
Enforcement of IP Rights
Prior to the promulgation of new IP laws and releases of related regulations, there are only limited ways to enforce the IP rights protection due to the absence of specific IP laws to recognise and protect various IP rights. In this connection, companies should avail themselves to the registration procedures in existence, and attempt to enforce the protection of trademarks with the following options available:
1. In relation to imported goods bearing the recorded trademarks, these marks need to be registered trademarks with the Myanmar Customs Department of the Ministry of Finance. Goods bearing the registered trademark yet imported by any party other than the local company granted with the right will be detained at customs.
2. Criminal or civil enforcement – this route should only be taken if a company can:
- Establish a connection to their trademark through actual use within Myanmar
- Prove that misrepresentation to the public has been made
- The suffered damage as a result of the misrepresentation
Currently, IP right infringement cases are handled through a complicated judicial system and many companies have used mediation to resolve IP disputes. It will remain to be seen how the new IP regime will sink in and foreign companies in the interim should seek legal advice from an attorney in Myanmar to decide on the best course of IP protection and enforcement.
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- Establishing a Presence
- Intellectual Property Protection
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