Expert Interview: Insights from our IP experts – Myanmar

Today, let’s meet Yuwadee Thean-ngarm, our IP expert based in Myanmar!

Yuwadee Thean-ngarm is a partner and director of Tilleke & Gibbins’ Myanmar practice. She is recognised as a leading lawyer in Myanmar by IFLR 1000 and Asialaw Leading Lawyers, and in 2019 was named one of the brightest young lawyers in Asia in Asian Legal Business’ annual “Top 40 Under 40” list. In 2023, she earned the title of Myanmar Client Choice Lawyer of the Year at the Asialaw Regional Awards. Yuwadee has been helping European brands secure their intellectual assets in Myanmar for over 12 years. Her leadership has positioned the firm as the country’s largest IP portfolio manager, trusted across industries for trademark, patent, and copyright protection, enforcement, and commercialisation in Myanmar. 

"In Myanmar, European SMEs can unlock long-term growth by working closely with reliable local partners to address regulatory uncertainty, financial constraints, and political sensitivities, while ensuring proper IP protection for their rights,” said Yuwadee.

Yuwadee is one of the many professionals in the South-East Asia IP expert network, supporting international SMEs across the region.

Q1: What is one statement (impactful/key message) you would like to share with European SME doing business in South-East Asia?

In Myanmar, European SMEs can unlock long-term growth by working closely with reliable local partners to address regulatory uncertainty, financial constraints, and political sensitivities, while ensuring proper IP protection for their rights. 

Q2: From your experience, what are the main IP risks or obstacles in Myanmar that EU SMEs should be aware of? 

• Risks of Infringement and Counterfeiting: The unauthorised use of identical or similar trademarks by third parties, whether through reproduction, imitation, or commercial exploitation, poses a considerable risk, particularly where enforcement mechanisms are insufficient.
• Limited Judicial Precedent for Enforcement: Myanmar's Trademark Law is a recent development, and there have been no precedent enforcement cases reported since April 2023.
• Challenges of the Procedures: With the enactment of new IP laws in Myanmar, small and medium-sized enterprises (SMEs) may face difficulties understanding precedents and guidelines, which could affect the timing of IP registration and enforcement processes.
• Insufficient Customs Protection: Customs authorities are involved in the protection of IP rights; however, the existing regulatory framework is characterised by unclear and inconsistent provisions, which can result in challenges for border enforcement.
• Need for Timely Re-filing Under New Trademark Law: SMEs should promptly file their trademarks under the Trademark Law to secure priority rights and statutory protections; failure to do so may increase exposure to infringement.

Q3: What are your top practical tips or advice for European SMEs regarding IP protection in Myanmar? 

• Protect the IP Rights by filing an IP Application locally: In Myanmar, European SMEs must file and register their IP rights locally. Failure to do so may prevent the IP owner from pursuing enforcement actions under Myanmar's IP laws.
• Engage Local IP Agents for Strategic Enforcement: Myanmar’s legal and administrative systems can be complex. Partnering with experienced local IP professionals ensures accurate filings, timely renewals, and effective enforcement.
• Proactively Monitor Market Activities and Online Platforms: In light of recent changes to IP laws and the absence of precedent cases relating to infringement and unauthorised use, European SMEs are advised to consistently monitor both physical marketplaces and digital platforms to identify and address instances of unauthorised use at an early stage.
• Leverage Customs Recordation to Prevent Counterfeits: Recording IP rights with Myanmar Customs allows authorities to intercept infringing goods at the border. This is an effective tool to combat unauthorised imports.
• Utilise IP Rights: In Myanmar, we recommend actively utilising, distributing, and promoting IP rights within the country. This approach helps prevent potential priority disputes or invalidation claims arising from non-use of IP rights in Myanmar.

Q4: Is there something SMEs often misunderstand or overlook when it comes to IP protection in Myanmar?

• Assuming Prior Use Equals Protection: A common misconception among many SMEs is that prior use of a trademark in Myanmar provides legal protection. However, pursuant to the new Trademark Law, Myanmar has adopted a first-to-file system, whereby statutory rights are conferred only upon formal registration with the Intellectual Property Department (IPD).  
• Expecting Physical Documentation: Some businesses expect hard copies of IP registration or recordal confirmations. However, Myanmar’s IPD issues all confirmations electronically via its e-filing system and no physical documents are dispatched.
• Overlooking Online Infringement Risks: Due to limited judicial precedent on digital IP violations, SMEs may not consistently focus on monitoring online platforms. However, instances of infringement in e-commerce and social media environments are increasing and require proactive surveillance.  

Discover our full network of IP experts across South-East Asia. 

Explore more insights on IP protection in Myanmar, download the Myanmar IP country factsheet.

If you have any further questions on how to protect your IP in SEA, contact us at expertsea-iphelpdesk [dot] eu (expert[at]sea-iphelpdesk[dot]eu).