Introduction

Myanmar, as a member of the World Trade Organization, the World Intellectual Property Organization, and ASEAN, is required to follow the TRIPS Agreement and the ASEAN Framework Agreement on Intellectual Property Cooperation. The Myanmar government enacted the Industrial Law in 2019 to comply the WTO obligations. The law come into force in October 31, 2023.  

Myanmar is a “first-to-file” system under the Industrial Design Law. Thus, the applicant who files the application the earliest gets granted registration.

Registrable Industrial Designs

Industrial design is defined in the law as “the appearance of the whole or a part of any industrial or handicraft product resulting from the features of, in particular, the lines, contours, colors, shapes, textures, or materials of the said product itself and/or its ornamentation" . Therefore, an industrial design can be any combination of shapes, colors, lines, and textures that give an industrial or handcrafted product an ornamental appearance.

The industrial design must be “new” and “independently created" It has not been disclosed to the public inside or outside of the country, by writing, by using, by publishing, by displaying, or by any other way, prior to filing the date or priority date. The industrial design shall not be protected, as the design is dictated essentially by technical or functional considerations. Besides, contrary to public order, morality, faith, or cherished culture of the state are not registrable.

Application Procedures

Industrial design applications must be filed with the Department of Intellectual Property. Foreign applications must be represented by a representative residing in Myanmar, and the representative form (ID-2 Form) must be notarized. The requirements for industrial design filing are as below:

1.     Name, address, contact details, passport number or the company’s registration number, and type of legal entity of the applicant;

2.     Name, nationality, and address of the creator;

3.     Locarno classification of the industrial design;

4.     Representative Form (ID 2 Form);

5.     Drawings, graphics, or photographs representing the industrial design;

6.     Short description of industrial design;

7.     For priority claims (if any), certified copies of the priority documents;

8.     Employment contract if the creator is an employee; and

9.     Official Fee for each class.

As Myanmar is a member of the Paris Convention and the World Trade Organization, applicants may claim priority based on an earlier application in a foreign nation within six months of the date of filing the first application. Furthermore, applicants may claim priority after the date of the worldwide display in a foreign nation within six months from the date of the first disclosure. The applicant may choose to defer publication of the application for up to 18 months from the filing date or the date of priority.

Term of Registration

A registered industrial design is protected for five (5) years from the filing date. After the five-year registration term expires, it is renewable for two further consecutive five-year terms.

The Rights of Registered Mark

The registered ID owner shall have the following rights:

(a) exclusive right;

(b) the right to sue the infringer in civil action;

(c) the right to prohibit any third party without the owner’s consent from using the registered ID in the course of making, selling, or importing; and

(d) the right to transfer or license the rights of the ID registered to anyone. The transfer or licensee of the ID registered should be recorded with the IPD.

Invalidation

Any interested person or public may apply to the registrar for invalidation or cancellation of an industrial design registration on the grounds that:

        -        The design does not meet the definition of industrial design;

        -        The design is not new;

        -        The design is against public order, morality, faith, or cherished culture of the state;

        -        The sufficient ground appears to be evidence that the applicant is not entitled to file;

        -        The registered industrial design was obtained by fraud, misrepresentation, or concealment of any prescribed fact; and

        -        Based on a final decision or judgment of the Intellectual Property Court regarding the application of invalidation for registered industrial design.

Transferring & licensing

The owner of a registered industrial design may transfer the license to any party. The transfer of ownership must be applied for and recorded with the registrar. The applicant or owner of the industrial design must apply to the registrar to record the transfer of application or ownership of the design. The owner or licensee may also apply to the registrar for the license to be recorded, along with a certified copy of the licensing documentation.

Infringement

Regarding the infringement of industrial design rights, the right holder may file a civil case in the Intellectual Property Court. The Intellectual Property Court may issue any one or more orders for an injunction against the infringement of industrial design rights, including the prohibition of imported industrial design infringing goods entering the state, as well as an order awarding the right holders sufficient damages for the injury, as well as an order to pay the right holder expenses such as legal costs and attorney's fees.

The information presented here is given solely for informational reasons and is not meant to be construed as legal advice. Our team would be delighted to assist you with registering your industrial design in Myanmar.  Should you have any questions or require further information, please do not hesitate to contact us via email  lawyer@mziplaw.com, info@mziplaw.com .