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Waiting for the Organiser…
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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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Welcome to the Webinar!
Mitchel SmoldersProject Officer
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
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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
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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.
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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.
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Existing Practices (Trade Mark)
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Section 18(f) of the Registration Act
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Existing Practices (Trade Mark)
Existing Practices (Trade Mark)
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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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Existing Practices (Trade Mark)
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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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Existing Practices (Trade Mark)
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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.
Existing Practices (Trade Mark)
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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
Existing Practices (Trade Mark)
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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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Existing Practices (Trade Mark)
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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.
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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.
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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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Office of the Registration of Deeds
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Office of the Registration of Deeds
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Office of the Registration of Deeds
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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
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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
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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
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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.
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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
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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.
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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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Existing Practices (Enforcement)
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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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Existing Practices (Enforcement)
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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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Existing Practices (Enforcement)
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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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Existing Practices (Enforcement)
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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
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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
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Name: Ms. Chan Wai Yeng
Firm: Taylor Vinters Via LLC
Location: Singapore
Email: [email protected]
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