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Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.
AT A GLANCE:
The Intellectual Property Office of the Philippines (IPOPHL) issued Memorandum Circular (MC) 2023-001, which sets forth the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2023 Replacing the Revised Trademark Regulations of 2017.
The said Rules and Regulations were drafted by the Bureau of Trademarks (BOT) and took effect on February 14, 2023. They were promulgated to replace and amend the 2017 Trademark Regulations, to institutionalize the protection for non-traditional visual trademarks, and to mandate that the filing of applications or submission of such related communication should only be done through the online submission system.
Protection for Non-traditional Visual Trademarks
The following provisions were incorporated in the said Rules and Regulations for the protection of non-traditional visual trademarks:
RULE 402. Reproduction of the Mark. – One (1) reproduction of the mark shall be submitted upon filing of the application which shall substantially represent the mark as actually used or intended to be used on or in connection with the goods and/or services of the applicant. The reproduction must be clear and legible, rendered in black ink or in color, if colors are claimed, and must be capable of being clearly reproduced when published in the IPOPHL e-Gazette. An electronic copy of the reproduction must be submitted through the online filing system. The electronic reproduction should be in .jpg format, must exceed 8cm x 8cm, and must not be more than two (2) megabytes. In the case of word marks or if no special characteristics have to be shown, such as design, style of lettering, color, diacritical marks, or unusual forms of punctuation, the mark must be represented in standard characters. The specification and/or description of the mark to be reproduced will be indicated in the application form and/or published on the website.
In the case of three-dimensional marks, one drawing of the mark in a single perspective view may be filed if it sufficiently depicts all its features. When one drawing is inadequate to represent the mark’s over-all shape or design or it would be difficult to ascertain these in one view, multiple perspectives may be submitted, in which case, the submissions should not exceed six (6) perspectives that are properly labeled – e.g., front view, side view, etc. – and submitted in one single .jpeg file.
In the case of color marks not defined by a given form but has acquired secondary meaning as defined under the law and issuances, a reproduction of the sample color must be filed together with a description of the shade of color to be claimed in ordinary language. In case of an application with a combination of multiple colors, a description detailing the systematic arrangement of the colors is required. Where the description is complex, the applicant may submit a pictorial representation showing the color/s claimed as applied on the goods, packaging, or service. The pictorial representation, however, should appear in broken or dotted lines to show that the shape of the goods or packaging is not claimed as part of the mark. The applicant may also include a designation from an internationally recognized color matching or identification system to describe the colors claimed. However, failure to indicate such international designation will not result in the denial of the application.
In the case of position marks, a drawing or reproduction of the mark that shows the placement of the mark and its size or proportion relative to the relevant goods or packaging is required. The applicant may also provide a description of the positioning of the mark.
In the case of motion marks, a clear and correct sequence of still images that corresponds to the movement depicted must be submitted. There is no limit as to the number of images, however, they must be submitted as a single .jpeg file. The applicant is also required to provide a clear and detailed description explaining the movement in sequential order. The applicant may also submit a video clip in .mp4 format or a series of still images in graphic interchange format (.gif) for clarity.
In the case of hologram marks, each of the various views which show all the material features of the mark must be depicted in the reproduction and must be filed in a single .jpeg file. The multiple view submitted must have only one commercial impression. For simple holograms, multiple views may not be necessary, and a single representation may be acceptable.
For three-dimensional marks, position marks, and color marks, in addition to the above requirements, the necessary broken or dotted lines must be sufficiently depicted in the representation to show the necessary disclaimers pursuant to Rule 604. The application must also provide a clear and accurate description as to the elements which are claimed and the unclaimed portions in the mark. In case the mark also contains any word, design, or symbol, the description shall also state these elements.
The provisions of this Rule shall, however, be construed liberally in determining whether the application shall be considered complete for purposes of granting a filing date.
RULE 403. Submission of Label. – For illustration, the applicant may submit the label as actually used or intended to be used on the goods or a computer printout of the label. The mark intended to be protected must, as far as practicable, be bigger and more dominant than the generic term of the goods, except in the case of pharmaceutical preparations or products, as required by law.
Stricter enforcement of submission through online submission system
In these modern times, the Office’s vision is to eventually digitize and automate all their daily transactions. Therefore, under these revised Rules and Regulations, the BOT emphasized that the filing of applications or such related communication shall be submitted only through the online submission system, to wit:
RULE 503. Mode of Filing; Transmitting Office Communications. The filing of applications or such related communication shall be submitted only through the online submission system, i.e., eTMFile, of the Office. The use of eTMFile shall be governed by existing Guidelines and other issuances that the Office may issue in the future.
Any other communication to the Office can be submitted online using the Office’s online submission system, i.e., eDocFile.
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It is only under exceptional circumstances (e.g., natural calamities, prolonged system downtime) that communication to the Office may be filed by electronic means (e.g., e-mail: bot@ipophil.gov.ph), by personal delivery, by courier services, or by registered mail, as may be ordered by the Director General or the Director of Trademarks.
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Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding legal services, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/ 0917-5772207/ 09778050020.
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