Industrial Designs in Myanmar: An Overview of the Impending Legislative ChangeDecember 2, 2017
The protection of industrial design is concerned with safeguarding the visual aspects of your products, as opposed to its functional properties, from unlicensed use. Conceptually, industrial design protection has been in the statute books since the Design and Patents Act 1945 (the “1945 Act”). However, despite the 1945 Act legislating for a controller of patents and designs, such an office has never come to fruition in Myanmar. Instead, a customary practice has arisen whereby market players register their designs with the Office of the Registration of Deeds (“ORD”), a process which provides little in the way of satisfactory protection of your intellectual property.
However, this is all set to change with the recent publication by the Myanmar Parliament of the Industrial Designs Bill (the “Bill”). The Bill will bring about comprehensive change to the system for industrial design protection.
In this briefing note we will outline some of the provisions of the Bill which may be of interest to players from all fields of the market.
The Bill defines an industrial design as the features of a product such as its “lines, outline, color, shape and texture or its ornament” of an “industrial product or a craft product”.
The Bill requires that in order for a design to be registrable, the design must be:
- not have been disclosed to the public, and;
- must be sufficiently distinctive.
The requirement of distinctiveness is a new introduction under the Bill and requires that the design must not be identical with, or similar to, known designs while at the same time requiring the design to be “significantly distinct”. However, the requisite degree of similarity required is not defined. It is anticipated that this may be defined within rules or further notifications issued to complement the Industrial Design Bill.
The Bill sets out several criteria of what cannot be registered, these include industrial designs which have been created by “technical or programmable means” and designs which are contrary to the public order, public morality and religion.
While the grounds of rejection for morality and public order are relatively established grounds, the inclusion of non-registrability of designs created by ‘technical or programmable means’ is a noteworthy addition under the Bill. However, it is unclear what precisely a design created by technical or programmable means includes. This is potentially problematic since technical and programmable creation encompasses most modern created designs.
The period of protection for industrial designs is five (5) years which can be renewed twice to a total of fifteen (15) years. This remains unchanged from the former protection period adopted under the 1945 Act.
A new provision in the Bill is the addition of a measure which allows two or more persons who have created the same design to make a ‘joint application’ for the registration of the design. Such a provision was absent from the 1945 Act although in its current undefined state offers little guidance on whether there is an upward cut-off limit on who can register joint applications.
Another concern is the absence of clear rules on joint filing of designs. In practice, this means that if a dispute arises as to whether a co-creator actually created or contributed to the creation of a design, there is no set of rules or guidelines determining the extent of creation required for the entitlement to file a joint application.
Among the reforms to be introduced by the Bill are penalties for a range of offences including disclosing classified industrial designs of which attracts penalties of imprisonment for a term of up to one (1) year, a fine of up to MMK 20,000,000 or both.
As a final word on the Bill, while it is likely to augment the intellectual framework for IP protection in Myanmar there are still areas which need further clarification including clear rules governing the filing of joint applications as well as defining precisely to what extent a design created by technical or programmable means will be refused registration.