Myanmar’s long-awaited first-to-file trademark registration system came into full effect on April 26, 2023, with the “grand opening” of the country’s Intellectual Property Department (IPD). This followed the issuance of the Trademark Rules and other related notifications at the beginning of April, in conjunction with the Trademark Law coming into force. Full enforcement of this law is a milestone in Myanmar’s long quest to establish a functioning, modern framework for trademarks in particular and for IP in general. The Trademark Law was passed in 2019 as part of suite of laws meant to modernize the country’s treatment of IP rights. Previously, IP rights holders in Myanmar relied on outdated systems based largely on laws from the colonial period under British rule. For example, brand owners could achieve some measure of protection through establishing use in the country and recording their marks with the Office of Registration of Deeds (ORD). However, these protections were limited and did not provide the same level of security and legal recourse as a comprehensive trademark registration system. Without a proper system in place, businesses were vulnerable to infringement and counterfeiting, which could be detrimental to their reputation and bottom line. The new Trademark Law will provide much-needed protection to brand owners and encourage innovation and investment in Myanmar, bringing the country in line with other Southeast Asian nations that have already implemented modern IP laws and systems, such as Thailand and Vietnam. Features of the Trademark Law In addition to the increased protection and streamlined filing procedures, the Trademark Law offers a range of other salient features: Administration: The core government ministry administering the new Trademark Law is the Ministry of Commerce. Four other ministries—the Ministry of Information; the Ministry of Industry; the Ministry of Agriculture, Livestock and Irrigation; and the Ministry of Education—are

As in many countries around the world, IP laws in Southeast Asia do not currently specify whether works generated by artificial intelligence (AI) are protected by copyright, and there is also uncertainty surrounding the issue of ownership with respect to works created by AI. While changes to the IP legal framework are expected to respond to the rapid development of AI technologies, existing copyright laws of most countries in Southeast Asia explicitly impose the requirement of a human author for copyright protection to arise. AI-Generated Works and the Law This is similar to the position in the United States, where the US Copyright Office issued a policy statement in March 2023 reiterating the US Copyright Act’s requirement of human authorship to register copyright works. The policy document states that when an AI technology determines the expressive elements of the output, the generated materials do not fulfil the human authorship requirement. However, the US Copyright Office also clarified that certain works containing AI-generated materials may nonetheless contain sufficient human authorship for a copyright claim, such as when a human selects or arranges the AI-generated materials in a sufficiently creative way for the resulting work as a whole to constitute an original work of authorship, or when an artist modifies material originally generated by AI technology to a degree that meets the standard for copyright protection. This is distinguishable from the position in countries such as the UK and Hong Kong, where absent specific provisions addressing AI-generated works, such works may arguably be considered by some as computer-generated works, with authorship assigned to the person who arranges for creation of the work. New Challenges from Generative AI The ongoing legal uncertainties surrounding the ownership and protection of AI-generated works create practical challenges for businesses that use or develop generative AI tools.

The director-general of Myanmar’s Intellectual Property Department (IPD) has written a newspaper article stating that the country’s trademark registration will come into full effect with the “grand opening” of the IPD on April 26, 2023. This announcement comes days after the IPD issued the Trademark Rules and other related notifications in conjunction with the Trademark Law coming into force. While an official notification confirming the date is still pending, the anticipated grand opening means that as of April 26, marks filed during the IPD’s current “soft opening” period—and for which all fees have been fully paid—will be officially accorded the first filing date, which is the date of the IPD’s grand opening. Accordingly, mark owners who submitted marks during the soft opening period need to pay the official filing fees before April 26 in order to secure the earliest possible filing date (i.e., April 26) under the Trademark Law’s new first-to-file system. Mark owners also need to submit a notarized Appointment of Representative (TM-2) form to the IPD to enable their trademark representative in Myanmar to carry out this step. Moreover, the trademark system coming into full effect with the IPD’s grand opening will enable mark owners to file registration applications for new marks—which has not been permitted during the soft opening. To expedite this process, these mark owners should now start preparing all necessary documents for filing their new trademark applications. For assistance ensuring that your existing mark secures the earliest possible filing date, or for assistance in processing new trademark applications, please contact Tilleke & Gibbins at [email protected].

As Myanmar’s long-awaited Trademark Law came into force on April 1, 2023, the government issued several pieces of implementing legislation, including the Trademark Rules. Together, this legislation gives shape to Myanmar’s new trademark system and paves the way for the eventual “grand opening” under the Trademark Law. The first piece of legislation, Notification 17/2023 of the Ministry of Commerce (MOC), set out the Trademark Rules. The rules contain detailed provisions on the registration and examination of marks, opposition to registration, priority claims, and criteria for well-known marks. The rules allow for substantive examination of trademark registration applications to begin. The second piece of legislation (MOC Notification 1/2023) established the Intellectual Property Agency (IP Agency). Made up of senior government figures, IP experts, and representatives of civil society, the IP Agency is responsible for implementing trademark policy and hearing administrative appeals against decisions by the trademark registrar. The IP Agency’s first notification set the official fees for requests and applications to the Intellectual Property Department (IPD), including a fee of MMK 150,000 (approx. USD 72) per class for filing a trademark application. Finally, the IPD issued two procedural announcements. Announcement No. 1/2023 confirmed that the second phase of the “soft opening” will commence on April 3, 2023. As explained in our previous update, during the second phase of the soft opening, mark owners who have already filed trademark applications with the IPD must pay the official filing fees. Announcement No. 2/2023 specified the ways in which these fees can be paid. Now that the Trademark Law has come into force and implementing legislation has been issued, mark owners should prepare to pay the necessary filing fees and submit their notarized Appointment of Representative (TM-2) forms to the IPD. We will continue to monitor developments related to the new trademark system. For more