22 Sept 2023
I. CUSTOMS RULES CONCERNING THE PROTECTION OF TRADEMARK RIGHTS
Customs Recordation
Customs recordation is an effective method that addresses brand owners’ concern of infringing goods entering a country. Following the introduction of trade mark law in Myanmar, on 14 July 2023, the Ministry of Planning and Finance of Myanmar issued Notification No. 50/2023 which establishes the rules for trademark owners to protect their rights through customs recordation.
Brand owners may apply to the Director General of Customs (“DG”), either directly or through a legal representative, for recordation. Such an application must be submitted together with any documentary evidence specified by the Customs Department. The DG shall review the application and notify the brand owner/applicant within 15 days from the date of receipt of the application.
Some of the required information for recordation is enumerated below:
General information of the right holder
Personal Data of the Applicant
Company Profile of the Applicant
Name of the goods for which the mark was obtained
Registration number at the Myanmar IP Department (“IPD”)
Date of Registration of the mark with the IPD
Duration of the right
The DG shall request the brand owner/applicant to submit any missing information within 7 days and shall notify the brand owner/applicant if the application has been accepted.
Failure to submit such required information within the specified timeframe will result in the DG rejecting the application.
The period of recordation is 2 years and can be renewed for 2 years at a time within 30 days before the expiration date.
Suspension Order
Brand owners may also apply for a suspension order under this new notification. The DG is empowered to suspend the circulation of goods bearing counterfeited marks if there is evidence to suspect that such goods are being imported into Myanmar.
An application for a suspension order may be made irrespective of recordation with the Customs Department. However, without a Customs recordation, the brand owner/applicant will have to establish its rights and undergo verification as required by the Customs Department on such rights. Thus, it is advantageous to have a Customs recordation in place so as not to delay an application for a suspension order.
To obtain a suspension order, reasons for seeking the order must be furnished, together with details of the importer/export against whom the order is sought.
If the DG is satisfied that the application of a suspension order is complete, the DG shall notify the brand owner/applicant of the acceptance of the application within 30 days of the date of receipt of application. If there is any missing information in the application, the DG shall request the applicant to submit the necessary information within 15 days from the date of notice.
After the DG has issued a notice of acceptance of the application for a suspension order, the brand/owner applicant shall submit a security deposit within 5 working days. Failure to do so will result in the rejection of the suspension order.
The DG is also empowered to issue a suspension order on an ex office basis based on inspection of goods by the Customs Department. In cases where an inspection is made by the Customs Department, the DG will notify brand owners/right holders within 15 days from the date of the suspension order to make security deposit payment, and failure to make such payment will result in the DG lifting the suspension order. The importer will be allowed to withdraw the goods thereafter.
The provisions (for both Customs recordation and suspension order) shall not apply to de minimis goods, reshipment cargo, retention cargo, transit trade cargo and goods permitted to be imported into Myanmar as needed for the public or in an emergency.
The rights owner must commence legal proceedings in the Intellectual Property Rights Court in relation to the shipment complained of. Otherwise, the order will lapse. The DG shall abide by orders of the Court and if found liable, the importer shall, amongst others, pay for the costs of storage, destruction, and removal from circulation of the goods under the supervision of the Customs Department.
II. ENFORCEMENT OF COPYRIGHT LAW
The Myanmar copyright law (“Copyright Law”) that was enacted in May 2019 will be implemented in October 2023, repealing the antiquated Copyright Act 1914. This move further reflects an invigoration of the current intellectual property landscape in Myanmar.
Notable features of the new Copyright Law include:
Protection of foreign works in Myanmar for the first time. Foreign works that have been published or produced abroad will be protected in Myanmar if they are published or produced in Myanmar within 30 days of its first publication or production in the foreign country. Myanmar is however not a signatory of the Berne Convention, which requires member countries to grant the same copyright protection to nationals and non-nationals, regardless of the country of publication.
Protection accorded to traditional copyright works such as literary and artistic works, as well as sound recordings, films and performers rights.
General duration of copyright for literary and artistic work is life plus 50 years after the death of the author. For film and sound recording, general duration is 50 years from the time of their being made publicly available, or their creation, as may be applicable.
Availability of voluntary registration of copyright - While copyright protection will arise without the need for registration, it will be possible to file for voluntary recordal of such works with the Registrar.
Formation of Collective Management of Copyright and Related Rights organisations – Rights holders to administer their rights through these organisations to simplify and streamline its management.
Border control measures – a right holder can apply to the Director General of the Customs Department to issue a suspension order if it is suspected that pirated copyright or related rights goods are being imported into Myanmar.
Civil action for copyright infringement and criminal penalties for copyright offences – both are prescribed in the law and may be pursued by the copyright owner simultaneously in the Intellectual Property Court, with the usual civil remedies of injunctive relief (including on an ex parte basis) and damages to copyright owners, and prescribed penalties for copyright offenders.
Should you have any query, or require assistance on trademark matters in Myanmar, please contact us at info@zicoip.com.