On January 30, 2019, Myanmar’s long-awaited Industrial Design Law—the first legislation specifically addressing the protection of industrial designs in the jurisdiction’s history—was passed into law.
The law lays out a comprehensive framework for the protection of rights over the external visual design of objects (i.e. the aesthetic design, rather than the practical). It will be implemented through administrative bodies (particularly the Intellectual Property Office) and enabling legislation that will be established and implemented in due course.
For an industrial design to be registrable under the law it must be domestically and internationally novel (i.e. not disclosed or exhibited to the public and free of imitation) before the application is made, or novel before the date of a priority right application from another jurisdiction was made if applicable.
Successful applications will result in protection for five years from the application date, renewable within six months of expiry for a further five years, twice (i.e. up to a maximum of 15 years in total). Applications filed within six months from the date of filing in a member country of the Paris Convention, or in another World Trade Organization member state, will enjoy a right of priority, and be accorded the same priority date.
Applications for multiple designs can be filed for protection under a single application if these designs fall under the same class in the Locarno Agreement Establishing an International Classification for Industrial Designs.
Protection will be enforceable through civil action by the owner(s) of the industrial design, as well as their heirs and assignees where appropriate. The law also establishes several criminal offenses related to fraudulent or dishonest registration, and to unauthorized disclosure of an industrial design, punishable by imprisonment of up to one year and/or fines up MMK 2,000,000 (approximately USD 1,300).
Establishing the New System
The effective date of the Industrial Design Law will be announced at a later stage. As with the Trademark Law, released at the same time, applications for registration are not yet being accepted under the Industrial Design Law, as the administrative structures necessary to do so are still being established. No timeline has been set out for the required implementing regulations and the establishment of the Intellectual Property Office.
Next Steps for Industrial Design Owners
Although the procedure and administrative bodies for the new system are not yet in place, the new law lays out the documents required for registration, which follow international standards and require substantial evidence of any priority rights, and clear and complete descriptions of the design in question along with an index of its uses and application. Rights owners seeking to extend international protections to Myanmar once the law is in force, or seeking to register new industrial designs in the jurisdiction, would be prudent to audit their portfolios to ensure that such details are easily and quickly available. A comprehensive audit should also cover the company’s operating documents, including employment documents and other contracts, to ensure that the ownership of design rights over work products are properly addressed.
The law is part of a suite of new Intellectual Property laws in the jurisdiction including the Trademark Law, which was issued on the same day, and the Copyright Law and Patent Law, which are expected to be passed in the very near future. Tilleke & Gibbins will continue to provide updates on all four laws as further details emerge.
For more information on this development, or to enquire about any of the steps above, including intellectual property portfolio audits, please contact our Myanmar office at [email protected] or on +95 1 255 208.