You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

December 21, 2023

Brand Protection at the Myanmar Border: Insights and Strategies from the Front Line

Subscribe to Updates
World Trademark Review

Can rights holders record trademark and brand-related IP information with customs and, if so, how?

Rights holders can record their registered marks with the Myanmar Customs Department to protect their intellectual property rights from cross-border trade in counterfeit goods bearing their registered marks under the Trademark Law, which came into force on April 1, 2023. Furthermore, regardless of whether they have filed a customs recordation, registered mark owners can request a suspension order to prevent the release of goods into free circulation if they have evidence giving reason to suspect that counterfeit goods are being—or will be—imported into the country, in accordance with Section 68 of the Trademark Law’s.

According to Ministry of Planning and Finance (MOPF) Notification No. 50/2023, once a trademark is registered under the Trademark Law in Myanmar, the registered mark owner is entitled to apply for a customs recordation with the Customs Department directly or via a legal representative at no cost. Unless the mark is registered with the Intellectual Property Department (IPD) under the Trademark Law, a customs recordation or suspension order cannot be applied.

A customs recordation is valid for two years from the date of the application’s acceptance. The recordation can be renewed every two years, 30 days before the expiration date. After the customs recordation is made, any information amended or withdrawn for the registered mark at the IPD must also be provided to the Customs Department within three working days, together with any necessary documentation reflecting the amendments or withdrawal.

Customs recordation is not available for industrial designs. The Industrial Design Law and Industrial Design Rules do not provide the requirements and process for a customs recordation or suspension order in relation to industrial designs. Section 68 of the Industrial Design Law indicates that, upon a rights holder’s request, the Court of Intellectual Property Rights can order provisional measures as it sees fit to prevent the infringement of the rights to the registered industrial design and to prevent the entry of the infringing goods into the domestic market. This includes imported goods after the payment of leviable duties to the Customs Department and customs clearance. In addition, the Industrial Design Law allows the Court of Intellectual Property Rights to issue a final decision on destroying the infringing goods or preventing such goods from entering the Myanmar market.

Are copyright registrations also registrable with Customs?

Under Myanmar’s new Copyright Law (enacted in 2019 and brought into effect on October 31, 2023 under State Administration Council Notification No. 218/2023), rights holders can apply at the Customs Department for a suspension order of the release of goods suspected of infringing copyright or related rights into free circulation if there are reasonable grounds for suspecting that the goods infringe copyright or related rights. The Copyright Rules under the Ministry of Commerce’s Notification No. 70/2023 setting up the procedures for copyright-related matters silents about the customs recordation or suspension order process. Subsequent rules and regulations laying out the requirements and procedures for an application of customs recordation and suspension order are being prepared.

While Myanmar has yet to ratify the Berne Convention, works by non-citizens or non-residents are protected under Myanmar’s Copyright Law 2019 if they are created and either first published in Myanmar or published in Myanmar within 30 days of the first publication in another country. The protection of copyrights automatically arises without a need for registration with the IPD.

Can brand owners send customs officials a product information guide or any additional materials to assist them in identifying genuine products?

MOPF Notification No. 50/2023 indicates that rights holders can provide the Customs Department with product information. This can include the:

  • product name;
  • details about the mark’s registration (e.g., registration date, number, and term);
  • supporting materials or tools; and
  • a detailed description for how to recognize the goods.

Documents can be attached to assist the Customs Department in identifying the genuine products; however, the notification does not indicate the specific type of documents for identification. No precedent is yet available to clarify the specific documents or other materials to send to the Customs Department for product identification as all marks filed under the Trademark Law are still pending registration, which means they cannot yet be the subject of an application for a customs recordation or suspension order.

What is the typical process for confiscation or further investigation in the event that customs officials identify potentially counterfeit goods?

If the Customs Department discovers potentially counterfeit goods or goods bearing a counterfeit mark, it will notify the relevant rights holder and importer that they may examine the suspected goods at the same time under the Customs Department’s supervision. The rights holder can apply to the Court of Intellectual Property Rights to take provisional measures for its damages. The importer is allowed to apply to the Court of Intellectual Property Rights if unsatisfied with the suspension order. The Customs Department is empowered to administer the suspected goods in accordance with the decision of the Director General of the Customs Department or the order of the Court of Intellectual Property Rights.

Upon a decision of the Court of Intellectual Property Rights confirming that the goods are counterfeit or bear a counterfeit mark, the Customs Department must take action accordingly, with the importer responsible for paying the costs of storing, destroying, and removing the goods. If the Court of Intellectual Property Rights decides that the goods are not counterfeit or do not bear a counterfeit mark, the rights holder must pay court-ordered compensation to the importer for the wrongful suspension and detention of the goods. The Customs Department can exchange information about allegedly infringing goods with other countries through the World Customs Organization.

How will brand owners typically be contacted when suspicious or counterfeit goods are identified?

Under the Trademark Law, regardless of whether an application for a suspension order has been filed with the Customs Department, the Customs Department must suspend the release of goods into free circulation whenever they find goods bearing a counterfeit mark. Without leaking confidential information, the Customs Department will notify the relevant rights holder and importer about the suspension order.

The rights holder must take legal action or inform the Customs Department about the actions of the Court of Intellectual Property Rights on provisional measures during the period specified under the Trademark Law and Trademark Rules, failing which the Customs Department will release the goods.

Are there any time-sensitive considerations that brand owners should be aware of when dealing with customs-related IP enforcement?

Upon the Customs Department’s acceptance of an application for a suspension order, the applicant must pay a security as directed within five working days from the date of notification of acceptance of the application, or else the application will be rejected. After the Customs Department issues a notification regarding its suspension order upon finding counterfeit goods, rights holders must take legal action (e.g., apply for a provisional measure at the Court of Intellectual Property Rights) within 15 days (or three days for perishable goods) from the date of the notification. If appropriate, the Customs Department may grant an extension of another 15 days before the expiration of the first 15 days.

What are the potential costs involved in working with customs officials to protect a brand’s intellectual property?

A customs recordation for a registered mark can be filed at no cost. However, the rights holder must pay a security (the amount has yet to be specified) to the Customs Department for an application for a suspension order to protect its intellectual property rights against cross-border trade. (No precedent is yet available.)

Can you provide examples of successful collaborations between international companies and customs authorities that have resulted in tangible results?

No precedents or examples under the Trademark Law are currently available. The Trademark Law came into effect on April 1, 2023, and the IPD commenced full operations on April 26, 2023. Therefore, registrations of all filed marks filed under the Trademark Law are still pending as of October 2023. Customs recordation or suspension orders for marks can be made only after the marks are successfully registered under the Trademark Law.

What proactive strategies can brand owners employ to enhance their partnership with customs officials?

Myanmar has implemented its new first-to-file system for statutory protection of trademarks following the enforcement of the Trademark Law. Registration under the Trademark Law is mandatory for mark owners to claim their exclusive rights over a mark. Brand owners should apply to register their marks under the country’s Trademark Law to secure their intellectual property rights, then make a customs recordation with the Customs Department upon successful registration of the mark to enjoy protection with regard to cross-border trade.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

February 22, 2024
Myanmar’s Intellectual Property Department (IPD) has released its announcement dated February 9, 2024, stating that it is now accepting applications for registration of copyrights and related rights under the Copyright Law of 2019. The Copyright Law of 2019 entered into force on October 31, 2023, replacing the old Copyright Act of 1914. The Ministry of Commerce (MOC) issued the Copyright Rules in Notification No. 70/2023 on October 23, 2023, setting the required procedures for copyright-related matters in Myanmar. Forms required for registration and related actions regarding copyrights and related rights were issued by the MOC under Notification No. 73/2023 on November 20, 2023. Regarding the official fees, the IP Agency issued Notification No. 1/2024 on February 13, 2024. While copyright protection arises automatically without the need for registration, rights holders can voluntarily apply for registration of their works under the new framework of the Copyright Law of 2019 if they wish to secure stronger evidence of ownership for their works in Myanmar. Applications can be filed by the applicant electronically, in person or through a local representative, or by post. Applicants incorporated or residing outside Myanmar must appoint a local representative to file the application with the IPD. For more information on the voluntary registration of copyrights and related rights in Myanmar, or for assistance in applying to register copyrights, please contact Tilleke & Gibbins at [email protected].
Read More
February 19, 2024
Indonesia is a multicultural country with diverse ethnicities, cultures, and religions, leading to a wealth of cultural creations, knowledge, and traditions. Where such creations, knowledge, and traditions are owned by a certain community and have become part of the identity of that community, they may be protected by Indonesian law as communal intellectual property. One type of communal intellectual property is traditional knowledge. A well-known example is a form of martial arts known as pencak silat. This martial art was traditionally performed when welcoming guests, usually accompanied by gondang borogong music, and is registered as traditional knowledge from Riau, Indonesia. New Regulation on Communal Intellectual Property Traditional knowledge used to be regulated by a number of laws, including three separate ones on copyright, patents, and cultural advancement. However, in December 2022, the Indonesian government issued Government Regulation No. 56 of 2022 on Communal Intellectual Property (“GR 56/2022”), establishing a single set of rules for the definition and protection of traditional knowledge. One of the aims of the regulation is to encourage the registration of communal intellectual property, which was part of the government’s priority program for 2023. Under GR 56/2022, traditional knowledge is defined as ideas and concepts that contain local values resulting from real experiences of interacting with the environment and that are developed continuously and passed on to the next generation. The regulation recognizes the following categories of traditional knowledge: Traditional methods or processes; Technical proficiency; Skills; Learning; Agricultural knowledge; Technical knowledge; Ecological knowledge; Knowledge related to genetic resources; Knowledge of medicine, traditional medicine, and healing procedures; Economic systems; Social organization systems; Knowledge related to the behavior of nature and the universe; and Other forms of knowledge. Traditional knowledge is a moral right belonging to the community, requiring any user of the traditional knowledge to acknowledge its
Read More
January 31, 2024
On January 31, 2024, Myanmar’s Intellectual Property Department (IPD) announced that it would officially start accepting industrial design applications under the Industrial Design Law on February 1, 2024. The IPD made this public in Announcement No. 1/2024, which comes three months after the Industrial Design Law entered into force on October 31, 2023. The Industrial Design Rules, issued by the Ministry of Commerce (MOC) on September 29, 2023, are another key instrument regulating the registration of industrial designs in Myanmar. In addition, the MOC’s Notification No. 71/2023 issued on October 27, 2023, specifies the forms required for industrial design registration and related actions, and the fees are specified by the IP Agency under Notification No. 2/2023, issued on December 29, 2023. Industrial design owners (individuals and legal entities) can file registration applications for new industrial designs with the IPD electronically, in person (directly or through a local representative), or by post. To be registered under the Industrial Design Law in Myanmar, industrial designs must be “new,” meaning that they must not have been disclosed to the public inside or outside Myanmar prior to the application date or the date of priority, if priority is claimed. Owners who wish to apply for and enjoy statutory protection of their industrial designs in Myanmar should start preparing all necessary documents and information for filing as soon as possible. For more information on industrial design registration in Myanmar or assistance in applying to register industrial designs, please contact Tilleke & Gibbins at [email protected].
Read More
January 24, 2024
Mickey Mouse (or, rather, a specific early version of the iconic Disney character) famously entered the public domain in the United States on January 1, 2024, almost 100 years after his 1928 debut in the short film Steamboat Willie. Mickey’s arrival highlighted the increasingly wide annual observance of “Public Domain Day”—the day when creative works enter the public domain for the first time, after the expiration of their copyright terms. This date, however, is not international, and depends on the copyright laws of each country. In Vietnam, Mickey Mouse had been in the public domain for years. Vietnam’s public domain regime Under Vietnam’s IP Law, the duration of copyright protection for moral rights is indefinite, except for rights to publish the works, which, together with economic rights, have a protection term of 75 years from first publication for cinematographic works, photography, applied art, and anonymous works. When these works are not published within 25 years from the date of their creation, the protection term is 100 years from the date of creation. For anonymous works, the protection term is determined when information about the author becomes available. For other types of copyrighted works (such as literary and musical works), following the Berne Convention, the protection term is for the life of the author and 50 years after the author’s death. Works for which the terms of protection have expired belong to the public. Everyone is entitled to use such works but must respect the moral rights of the authors. According to these regulations, Steamboat Willie and two other 1928 Mickey Mouse shorts, which are regarded as cinematographic works, have been in the public domain in Vietnam since 2003. This means that, for the past 21 years, anyone could legally copy, publish or distribute those shorts in Vietnam, and could
Read More