by: Atty. Andre Jose H. Surigao
In the Philippines, a trademark is often associated with just words, symbols, logos, design, or a combination of these. Such is the general notion despite the broad definition of “trademark” under Philippine laws, i.e., any visible sign capable of distinguishing the goods of an enterprise. Change, however, may come as the Intellectual Property Office of the Philippines (“IPOPHL”) issued Memorandum Circular No. 2023 – 001 or the Trademark Regulations of 2023 (“Regulation”) on January 10, 2023.
The Regulation, which took effect on 14 February 2023, amends the Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers that was issued way back in 2017. The Regulation, among others, institutionalizes the protection of non-traditional visual trademarks, thus paving the way for nontraditional marks to be acceptable in the Philippines.
Non-Traditional Visual Trademarks
Non-traditional visual trademarks are those which do not fall under the conventional categories of marks such as logos, signs, or symbols but fulfill the essential purpose of identifying goods and services of an enterprise. These marks include three-dimensional marks, color marks, position marks, motion marks, and even hologram marks. These marks, though unconventional within the realms of trademark protection in the Philippines, are actually prevalent in our day–to–day lives.
A three-dimensional mark includes both the shape of the goods and their packaging. The contour of a Coca-Cola bottle inspired by a cocoa bean or the shape of a Toblerone chocolate bar are well-known examples of these.
A color mark is a mark in which at least one color, or a combination of colors, performs the trademark function of uniquely identifying products or services. An example is the red sole of Louboutin shoes, the iconic robin’s egg blue hue known around the world as Tiffany Blue, or the Pullman Brown color of UPS trucks.
A position mark consists of the specific way in which the mark is placed in or affixed to the product. An example is the Arcuate Stitching Design of Levi Strauss jeans or the three-striped design of Adidas shoes.
A motion mark consists of a movement or a change in the position of the elements of the mark. Simply put, it is a moving logo. A classic example is the connecting hands in the old Nokia phone’s welcome screen, or the parallel car door motion of a Lamborghini in which the doors gradually rise above the vehicle in a parallel position.
Lastly, a hologram mark is a logo or image that changes its appearance when looked at from different angles. An example is the Glaxo Group’s trademark registrations for the holograms that appear on their packaging of goods such as toothpaste, dental floss, and mouthwash.
With the promulgation of the Regulation, the IPOPHL recognizes these non-traditional visual marks and makes it clear to the public that such marks may, subject to the guidelines, be registered for protection in the Philippines. As stated by IPOPHL Director General Rowel Barba, the Regulation “institutionalizes the protection of nontraditional visual marks. With this, IPOPHL is now clear with the acceptability of color marks per se, motion marks, position marks, and hologram marks.”
The Guidelines
Businesses or individuals who intend to register these marks in the Philippines are required to indicate in their application the kind of mark they wish to register. A mere statement indicating their nature is sufficient. If the applicant wishes to claim color as a distinctive feature of the mark, a statement to that effect, as well as the name or names of the color or colors claimed, and an indication, in respect of each color, of the principal parts of the mark which are in that color, is required.
The application must be submitted to the IPOPHL together with a reproduction of the mark. In 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. If not, several drawings depicting multiple perspectives may be submitted, but it shall not exceed six (6) perspectives that are properly labeled and submitted in one single .jpeg file.
In the case of a color mark not defined by a given form but has acquired secondary meaning, 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.
For 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.
For 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. If needed for clarity, the applicant may also submit a video clip or a series of still images in graphic interchange format (.gif) for clarity.
For 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 views submitted must have only one commercial impression.
The mandatory online filing, which has been in place since September 2020, has been formally adopted and implemented by the Regulation. Thus, an application, whether for traditional or non-traditional marks, must be done through IPOPHL’s online filing system. All other communications to the IPOPHL must also be filed using the IPOPHL’s online submission system. Further, all notices from the IPOPHL will be sent to the applicant’s official or registered email address. For purposes of reckoning the applicable prescriptive periods, the “mailing date” is deemed to be the date when the notice, action, or issuance is initially sent through the e-correspondence system or sent to the designated registered email of the applicant. However, in case a notice, action, or issuance is received both through e-correspondence and email, the reckoning date will be the later date of receipt. The mandatory online filing admits exceptions but only under exceptional circumstances, such as natural calamities and prolonged system downtime. In such cases, applications and other communications may be filed via email, personal delivery, courier service, or registered mail, as may be ordered by the IPO director general or the director of trademarks.
In sum, the Regulation opens the avenue to a newer and more dynamic take on what trademarks truly are. Utilizing it to its full extent, the Regulation may encourage innovation, especially among Filipino tech start-ups, and spur imagination on brand and/or product representation.
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Andre is a Junior Associate and a member of the Labor, Litigation, Taxation, and Corporate Services departments of the firm.
Andre’s practice areas include labor, litigation, intellectual property, government procurement, taxation, and general corporate law. He represents various clients involved in civil, criminal and labor cases. He handles tax-related matters before the Court of Tax Appeals and the Bureau of Internal Revenue. He has experience in intellectual property law and assist clients in their application for registration of trademarks, both in the Philippines and internationally. He also assist clients in public bidding and government procurement projects.
