Developments in trademark rules
For position marks, a drawing or reproduction of the mark that shows its placement and size or proportion relative to the relevant goods or packaging must be submitted.
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For position marks, a drawing or reproduction of the mark that shows its placement and size or proportion relative to the relevant goods or packaging must be submitted.
2023 was an eventful year for intellectual property development in the country.
Highlighted in this area is the Intellectual Property Office of the Philippines' issuance of Memorandum Circular 2023-001 or the Rules and Regulations on Trademarks, Service Marks, Trade Name and Marked or Stamped Containers of 2023 Replacing the Revised Trademark Regulations of 2017 (2023 Trademark Rules). There is much to love about these 2023 Trademark Rules, which coincidentally took effect on Valentine's Day, 14 February 2023.
Among the positive reactions heard from the public were the developments in the area of protection over non-traditional marks such as three-dimensional, color, position, motion and hologram marks.
Provisions on these marks include the formal filing requirements thereof, such as the reproductions to be filed, which are listed under Rule 402. For three-dimensional marks, one drawing of the mark in a single perspective may be submitted if this sufficiently depicts all the features of the mark. However, if such is inadequate, multiple perspectives not exceeding six may be submitted.
Proper labeling must be observed for the submission of multiple perspectives (i.e., front view, side view, etc.), which should be submitted in one jpeg file. For color marks that have acquired secondary meaning, a sample thereof must be filed together with a description of the shade of color to be claimed in ordinary language. Should the application be a combination of multiple colors, a description detailing the systematic arrangement of colors is required. A pictorial representation must likewise be included if the description is complex (subject to further formal filing requirements.)
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For position marks, a drawing or reproduction of the mark that shows its placement and size or proportion relative to the relevant goods or packaging must be submitted. A description of the positioning may also be provided. For motion marks, the sequence of still images corresponding to the movement illustrated must be submitted together with a detailed description of the movements in sequential order. All the images must be submitted in a single jpeg file. A video clip in mp4 or a series of still images in gif format may also be submitted to adequately show the motion represented.
For hologram marks, all the material features of the mark in various perspectives, as may be necessary. A single representation for simple holograms may suffice. These views must similarly be submitted using a single jpeg file. It is noted that there should only be one commercial impression for the multiple views. Additionally, the same rule provides that the necessary broken or dotted lines must be sufficiently depicted in the representations for three-dimensional, color, and position marks following the disclaimer requirements under Rule 604.
Another development in the 2023 Trademark Rules is the utilization of fully automated transactions with the IPOPHL via its electronic filing system. In line with this, responses to the correspondences from the IPOPHL are now reckoned from the date that these were sent to the registered email of the applicant or agent and not the sending of physical copies to the applicant or agent's registered office address.
Rule 304 also provides for additional regulations regarding the submission of an agent's power of attorney. While the authorization is not required at the time of filing the application, this must be submitted within the two-month period following the mailing date of IPOPHL office action requiring the same. Otherwise, further action may not be permitted by the IPOPHL.
Likewise, it is worth noting that the IPOPHL's fee structure for trademarks has been revised under Memorandum Circular 2023-002. Highlighted in the revisions is that the payment for the publication and opposition fee shall now be paid together with the filing fee, whereas in the past, these fees were paid after the receipt of a Notice of Allowance for Publication. As explained by the IPOPHL, this mitigates the chances of abandonment of applications due to inadvertent non-payment of filing fees.
Increased utilization and enforcement of intellectual property rights have enriched individuals' and corporations' business ventures, which redounds to the economy. Indeed, these regulatory developments are proof that the Philippine intellectual property landscape is flourishing.
For more of Dean Nilo Divina's legal tidbits, please visit www.divinalaw.com. For comments and questions, please send an email to cabdo@divinalaw.com.
