Chadd Concepcion | 6 August 2019 Updates on Myanmar IP Chadd Concepcion | 6 August 2019

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

Current State of Affairs 1 Current State of Affairs

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

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

Est. Q2 2020 Trademark Industrial Design Patent Copyright LAWS NOT YET January 2019 Replaces Registration Law Trademark No previous law Industrial Design February 2019 Patent May 2019 Replaces 1911 Copyright Act Copyright LAWS NOT YET IN EFFECT IP Department to be established Est. Q2 2020

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

3 Trademark

Application Formal Examination Publication 60-day opposition window Approval Registration Certificate (10y) Cancellation 3y 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 ~ Q2 2020

4 Strategy

File Wait Marks never registered or published in Myanmar Marks registered more than 10 years ago Registered, but not in the name of owner (assigned marks) 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 5+ years Enforcement

Questions