New Trademark Regulations in the Philippines: Protecting Non-Traditional Marks through Trademark Registration
The Intellectual Property Office of the Philippines (IPO) recently implemented notable revisions to the policies and guidelines concerning trademarks, service marks, trade names, and labeled or imprinted containers. These changes aim to streamline administrative procedures, trademark registration, enhance the enforcement of trademark rights, and recognize the protection of non-traditional visual trademarks.
In this article, we discuss the key amendments introduced by the IPO in its latest memorandum circulars, which took effect on February 14, 2023.
Non-Traditional Visual Trademark Registration
The new regulations institutionalize the trademark registration of non-traditional visual trademarks, including color marks, position marks, motion marks, hologram marks, three-dimensional marks, and certification marks. These marks bring a unique element to the world of trademarks and require specific guidelines for their registration.
Note that the changes are limited to visual marks and have not yet been expanded to non-visual trademarks such as sound and smell. This is because the Intellectual Property Code still defines a trademark as limited to a “visual sign.” Signs appealing to other senses, i.e., hearing and smell, are not yet included. Thus, it may take longer after the IP CODE is amended before the Philippines can adopt and recognize sound and smell trademarks.
Color Marks
Color marks that have acquired secondary meanings can now be registered with the IPO. Applicants must provide a reproduction of the sample color and a description of the shade of color to be claimed.
In the case of applications with a combination of multiple colors, a description detailing the systematic arrangement of the colors is required. Applicants also have the option to submit a designation from an internationally recognized color matching or identification system to describe the claimed colors.
Position Marks
Position marks, which represent the mark’s placement and size or proportion relative to the relevant goods or packaging, can now be registered with the IPO. Applicants must submit a drawing or reproduction of the mark showing its position in their trademark registration.
Motion Marks
Motion marks, which depict movement, require a clear and correct sequence of still images corresponding to the movement. You must submit these images as a single .jpeg file, along with a comprehensive and detailed explanation that describes the movement in a step-by-step order. Sometimes, a video clip or a series of still images in .gif format may be submitted for clarity.
Hologram Marks
Hologram marks, which display a holographic effect, require the submission of various views that show all the material features of the mark. These views must be depicted in a single .jpeg file. A single representation may be acceptable for simple holograms.
Three-Dimensional Marks
For three-dimensional marks, applicants can submit one drawing that sufficiently depicts all the features of the mark in a single perspective view. If one drawing is inadequate, applicants may submit up to six properly labeled perspectives in a single .jpeg file. The unclaimed parts of the configuration and elements that are not capable of being registered as trademarks must be presented in broken lines to indicate that they are not claimed as part of the mark.
Certification Marks
Certification marks can now be applied for trademark registration, which certifies regional or other geographic origins, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services. The submission should identify the mark as a certification mark and include an attached copy of the standards defined by the certifier, which regulate the appropriate usage of the mark.
Requirement of Appointing a Philippine Resident Agent for Trademarks and Consequences of Non-Compliance
Foreign applicants/ holders of trademarks should appoint a local Philippine agent or trademark attorney. Failure to submit a written designation of a local representative or power of attorney within two months from the mailing date of the IPO’s office action may result in the abandonment of the application. Communications not responsive to office actions, including irrelevant attachments, will not be considered filed and stricken from the record.
To ensure applications are correctly filed, we highly advise foreign applicants who are not Philippine residents to appoint a local counsel, such as J. Ponce Law, or a resident agent to handle all submissions.
Other Salient Provisions
The new regulations introduce several additional changes to trademark prosecution and maintenance:
One-Time Filing Fee
The new regulations require the payment of a one-time filing fee for trademark applications, which includes the publication for opposition fee, convention priority claim fee, priority examination fee, and issuance and second publication fee. Unlike the previous system, where additional fees were required later in the prosecution process, the new regulations require advance payment.
When To File the Renewal Declaration of Actual Use
The renewal of the Declaration of Actual Use may now be filed either after renewal and within one year from the date of renewal or before renewal within the six-month period before the expiration of the trademark registration.
Acceptable Proof of Use
Photographs of labels or packaging bearing the mark as actually used on the goods, the stamped or marked container of goods, or signage displaying the mark may be submitted as proof of use. Other evidence of use that are acceptable may be any of the following:
- downloaded pages from the website that clearly show the goods are being sold or the services are being rendered in the Philippines;
- photographs of goods bearing marks as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;
- brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
- receipts or invoices of sale of the goods or services rendered or other similar evidence of use showing that the goods are placed on the market or the services are available in the Philippines, and;
- copies of contracts for services showing the use of the mark
Divisional Applications
A single-class application may now be subdivided into two or more separate applications upon payment of the prescribed fees. The request to divide an application may be submitted at any time prior to its registration.
Submission of Foreign Registration for Marks with Claim of Priority
Trademark applications with priority claims now have one year from the mailing date of the examiner’s notice to submit a photocopy of the foreign registration. This period may be extended further upon request and payment of the required fee.
Authentication of Deeds of Assignment, License Agreements, and Other Similar Documents
It is necessary to provide the IPO with the original documents or certified true copies of deeds of assignment, license agreements, and other comparable records. These documents must be authenticated or apostilled appropriately if executed and notarized abroad.
Publication of Other Matters
Marks subject to settlement and/or compromise agreements with amendments to the mark, its description, and/or specification, or voluntary cancellation, will be republished in the IPO Electronic Gazette.
Wrap up
The new trademark regulations in the Philippines represent a significant step toward the protection of non-traditional visual trademarks. With the recognition of color marks, position marks, motion marks, hologram marks, three-dimensional marks, and certification marks, businesses can now register unique trademarks that go beyond traditional word or logo marks.
Businesses must familiarize themselves with these new regulations and consider applying for the trademark registration of their non-traditional marks to obtain protection under the Philippine trademark system.
By adhering to these regulations, businesses can safeguard their intellectual property rights and enhance their brand recognition.
J. Ponce Law is committed to safeguarding your intellectual property rights. Our accomplished team of experts and extensive proficiency uniquely position us to manage all facets of intellectual property law adeptly. Get in touch with us today.