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Wai Yeng Chan

Setting the Scene: an IPR Introduction

to Myanmar

South-East Asia IPR SME Helpdesk

12 December 2017

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12 December 2017Copyright © 2017 South-East Asia IPR SME Helpdesk.

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Speaker’s bio

Name: Ms. Chan Wai YengFirm: Taylor Vinters Via LLCLocation: SingaporeEmail: [email protected]

Wai Yeng has over 10 years of experience in Intellectual Property. Prior to joining Taylor Vinters Via, Wai Yeng worked in the IP department of a number of law firms in Singapore and acquired significant experience in patent work including drafting of patent specifications, patent registrations and advising clients in relation to patent infringement.

In addition to handling the patent practice of Taylor Vinters Via, Wai Yeng heads their Brands Practice, working closely with Taylor Vinters in the UK in ensuring that their clients’ brands are protected not only locally but also on a regional and worldwide level.

Wai Yeng has extensive experience in building and protecting brands in emerging markets. In her last role, she headed the IP practice of the largest foreign law firm in Myanmar that supported rights owners in relation to the enforcement, border control, due diligence and protection of trade mark rights.

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Presentation Outline

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▪ Background1. Myanmar at a glance2. Present state of IPR Protection in Myanmar3. Development in IP laws

▪ Part 1: IP Protection1. Existing Practices2. Changes under new law

▪ Part 2: Enforcement of Rights 1. Existing Practices2. Changes under new law



Background

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Country Profile– Land Area: 676,578 Km2

– Population: 53 Million– Administrative capital: Nay Pyi Taw– Ethnic Groups: 135 recognized– Neighbouring countries:

China, Thailand, India, Bangladesh and Laos

Major industries Agricultural processing; wood and wood products; copper, tin, tungsten, iron; cement, construction materials; fertilizer; oil and natural gas; garments; jade and gems

Background

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Present state of IPR protection• Copyright Act 1914 • No specific trade mark, patent or design law• General laws including the Penal Code and Specific Relief Act

that references certain IP rights• Governmental direction and the Registration Act forms the

basis of trademark registration

Developments in IP Laws• Member of WTO – TRIPS• Member of ASEAN - ASEAN Framework Agreement on IP

Cooperation• New laws largely standardize Myanmar’s IPR landscape with

the global community



Part 1: IP Protection

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In Myanmar, trademark protection, is generally recognized under the rule of common law, and the first-to-use system is appreciated as the basic principle of trademark protection.

Trade mark ownership is registrable under the Registration Act but is not conclusive for emergence of the rights, but may be mere prima-facie evidence regarding the ownership of the rights.

Registration of trade mark ownership is useful in establishing rights in a civil and criminal procedure against an infringer.



Trade Mark protection

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Direction 13 of the Registration Act

• Trade marks may be registered under the Section 18(f) of the Registration Act, in Register Book 4, by means of a declaration of each trade mark.

• The declaration shall contain the name of the company, individual or firm represented in a special or particular manner and the signature of the applicant for registration or some predecessor in his business.

• A trade mark should have one or more invented words and may be registered in respect of particular goods or classes of goods.



Existing Practices (Trade Mark)

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Section 18(f) of the Registration Act





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Requirements for trade mark registration• Notarised and legalized Power of

Attorney • Notarised Declaration of ownership

with clear representation of mark

✓ One mark per Declaration✓ Multi-class application is acceptable

Effect • A successful registrant will be

deemed the prima facie owner• Perpetual rights are accorded to

registered marks




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Post-Registration Practices• Publication of Cautionary Notice in

newspaper • Renewal of registration

• re-registration once every three years from first registration;

• re-publication once every three years after the first publication; or

• Both re-registration and re-publication

Local newspapers include:




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Although publication of the cautionary notice is not a statutory requirement, it would contribute towards evidence for use of the mark.

Useful procedure in the current trademark practice in Myanmar.


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Application Confirmation Publication

Submission of supporting

documents:

• Power of Attorney

• Declaration of

ownership of Trademark

Office of the Register of

Deeds to confirm

registration

• 3-4 work weeks from

date of submission of

complete requirements

• Confirmation is typically

granted in due course

Publication of Cautionary

Notice

• Publication is not

required by law, but is

recommended

• Publication may

constitute first use


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Searches

• The records of the Office of Registration of Deeds are not publicly available.

• Unofficial searches can be conducted through local private entities that archive trade mark cautionary notices published in Myanmar.




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Trade Mark Opposition

• No avenue for opposition during the trademark registration process.

• If a party wishes to oppose the registration of a trademark, this opposition would be done by filing a complaint in Myanmar’s local court. The registration may be invalidated with order of cancellation granted by the courts.



Poll

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What percentage of trade mark applications progress to registration in Myanmar?

A. 0-50%B. 51-70%C. 71-99%D. 100%

Poll

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Answer: D. 100%

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Recap:

There is no substantive law which is effective and applicable to patent and industrial design till date.



Patent & Design protection

Existing Practices (Designs & Patents)

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Industrial designs and patents are registrable in Myanmar under the Section 18(f) of the Registration Act.

Notably, for patent registrations, a patent certificate for the same invention issued by a foreign patent office must accompany the Declaration of Ownership of Patent.

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Existing Practices (Designs & Patents)

Similar post-registration process applies whereby the patent or design owner publishes a Cautionary Notice in a local newspaper and republishes the Cautionary Notice on a periodic basis.

Payment of Stamp Duty

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Office of the Registration of Deeds

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New IPR system and infrastructure

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Establishment of Myanmar Intellectual Property Office (MIPO)

➢ To manage and administer the registration of IP ➢ To oversee opposition and cancellation actions

from interested third parties➢ To promote education and awareness of IP in all

sectors➢ Formulate IP policies & strategies



Latest Trade Mark Bill

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Clarification of registration process:• First to file system• Filing of application in English or Burmese,

accompanied by declaration of intention to use• Substantive examination and examination of

formalities• Publication for opposition by third parties for a 60-

day period• Issuance of registration certificate

• Recognises the international classification of goods and services

• Duration of protection of 10 years



Latest Trade Mark Bill

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Clarification on types of marks which can be protected✓Visual, smell, touch, and sound ✓ Service marks✓Collective marks✓Certification marks✓Well-known marks



Watch outs and tips

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Position of an existing trade mark owner• Existing registrations will not be

automatically protected under the new system

• Need to re-file an application for registration of the mark that has been registered under the current registration system

• The existing Declaration of Ownership must accompany the new filing

Latest Patent Bill

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Clarifies that a patentable invention must:• Be novel • Involve inventive step• Be industrially useful

Excludes certain types of inventions, including the following:• Mathematical methods• Living species• Methods for treatment of human body

Patents will be protected for 20 years, subject to the payment of annuity fees

A compulsory license and a system for statement of dissatisfaction is provided.



Latest Industrial Design Bill

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Provides definition of Industrial Design• appearance of the whole or a part of any industrial or

handicraft product resulting from the features and its ornamentation or in particular, the features of lines, contours, colours, shapes, texture, handwoven cloth, materials of the products or its ornamentation

Excludes certain designs:• industrial designs that are only differentiated by technical or

functional creation; and• industrial designs that are contrary to public order, morals,

faith or the cherished culture of Myanmar



Latest Copyright Bill

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• The existing Copyright Law only allows for domestic protection of copyright in works that are either first published in Myanmar or for unpublished work created by a citizen, resident or person with a habitual residence in Myanmar.

• The current bill extends protection to works created by nationals from member countries of the Berne Convention.



Watch outs and tips

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Registration of Copyright • Copyright is presently not registrable

in Myanmar. • However, under the latest Copyright

Bill, an author or owner can choose to register their copyright with IPOM.

• Registration of copyright creates the advantage of providing proof of ownership. Such proof is useful when commencing copyright proceedings.

Part 2: Enforcement

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Existing Practices (Enforcement)

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Civil proceedings for infringement • A plaintiff can bring a common law civil action for

patent/trade mark/copyright infringement or passing off (for trade mark)

• Most complainants also seek injunctions to refrain the defendant from continuing their acts of infringement or passing off (Specific Relief Act)

• During proceedings, the Court takes into account current use of the registered IP – one reason IP owners publish Cautionary Notices every 3 years.




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Criminal Prosecution • Under the Penal Code, it is an offence to use

counterfeit trade marks (S480), possess instruments for counterfeiting trademarks (S485), or sell goods marked with counterfeit trade marks (S486).

• Penalties range from a fine to imprisonment of up to 3 years

• Seizure and destruction of goods can be ordered, in accordance with the Criminal Procedure Code




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Criminal Prosecution • For copyright infringement in respect of certain

types of goods, specific laws are also of relevance:• Television and Video Law makes it an offence to

copy, distribute, hire or exhibit videos for commercial purposes without the consent of the owner

• Computer Science Development Law makes it an offence to import and export infringing copies of computer software




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Customs and Border Control• The Sea Customs Act and Land Customs Act make it an

offence to export or import goods marked with a counterfeit trade mark

• Customs officers are authorized to stop and search persons, vessels or vehicles on the grounds of reasonable suspicion

• Any goods exported or imported in contravention of these statutes are liable to confiscation




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Customs and Border ControlIP owners can record trade marks with the Customs Department by submitting the following:

• Application form and letter• Distributorship agreement with local authorized distributor• Authorisation letter that must be notarized and legalized • Power of attorney • Declaration of Ownership of Trademark and Cautionary

Notice• Samples of trade mark and products to which they are

applied (optional)Training Sessions for Customs Officials

• IP owners who have recorded registrations should also conduct product identification training sessions for Customs officials



Changes under the new IP regime

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Establishment of specialized Intellectual Property CourtsClarification of criminal and civil sanctions for infringement of IP

• For example, the Trade Mark Bill clarifies that trade mark infringement is punishable for fines or up to 3 years’ imprisonment

Introduction of Opposition, Invalidation and Cancellation ActionsEnhancement of Customs’ powers

• Customs are permitted to issue a Suspension Order • Similar to injunction order • Trade Mark Bill sets out specific procedures for issuing,

lifting and challenging Suspension Orders



Name: Ms. Chan Wai Yeng

Firm: Taylor Vinters Via LLC

Location: Singapore

Email: [email protected]

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