The Intellectual Property Office of the Philippines promulgated the 2023 Trademark Regulations (“2023 Trademark Regulations”) which took effect on 14 February 2023.

The 2023 Trademark Regulations is intended to streamline administrative procedures in registration of marks, enhance the enforcement of trademark rights, and protect not only visual trademarks, but also non-traditional trademarks such as color marks, three-dimensional marks, position marks, motion marks and hologram marks. Additionally, it recognizes the shift to a zero-contact policy and automated business-related through established online systems and facilities for expedited filing, transmission, and receipt of official communications and payment.

Zero-Contact Policy

Generally, the filing of applications or other related communication shall be submitted only through the online submission system, eTMFile. ¹Recognizing the presence of the online facilities, the 2023 Trademark Regulations now define “registered e-mail” ², which includes the applicant/registrant/authorized representative’s email that is stated or entered in the online application system (eTMFile), or as may be subsequently communicated to the IPO.

For purposes of reckoning the applicable prescriptive periods, the “mailing date” ³ is the date when the notice or action is initially sent through the e-correspondence system or sent to the designated registered e-mail of the applicant/registrant/authorized representative. Moreover, in case an office action or issuance has been received through the system and the e-mail, the reckoning date will be the later date of receipt.

Under exceptional circumstances, such as natural calamities or prolonged system downtime, the communication to IPOPHL may also be filed via electronic means ( bot@ipophl.gov.ph), by personal delivery, by courier services, or by registered mail. ⁴

Moreover, the 2023 Trademark Regulations modified other related provisions recognizing the digital environment. The applicant/registrant is now required to use IPOPHL-prescribed form/s for submissions, and that if such applicant/registrant fails to comply, the submission shall be considered as not filed. Despite the requirement, the IPOPHL provides a grace period. ⁵  Meanwhile, scanned copies of the hard copies of communications and supporting documents shall be filed in Portable Document Format (pdf). ⁶

Declaration of Actual Use

The submission of the Declaration of Use is required to maintain the mark since non-submission will result in the refusal of the application or the removal of the registered mark. In addition to the Declaration of Actual Use, the applicant or the registrant is required to submit evidence of actual use of the mark on the covered goods and services.

The 2023 Trademark Regulations now define “actual use”, as use in the ordinary course of trade that demonstrates real and commercial purpose targeting the public.

A new period has been provided for the submission of the Renewal Declaration of Use, which can now be filed (6) months before the expiration of the registration.

Power of Attorney

For foreign applicants or registrants transacting with the IPOPHL through a local representative, the 2023 Trademark Regulations require that the Power of Attorney (POA) include the local representative’s email address. ⁷

More importantly, the new Regulations provide a penalty. If the written POA is not filed within two (2) months from the mailing date of an Office Action requiring submission of the same, the application may be considered abandoned. ⁸

Certification Marks

The 2023 Trademark Regulations has also defined “certification mark” ⁹ as any sign, used, or intended to use in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on goods or services was performed by members of a group or associations.  Furthermore, the new Regulations provide that for a trademark application involving such marks to be granted, it must be accompanied by a copy of the standards set by the certifier governing the use of the certification mark. ¹⁰

Non-traditional Marks

Under our current Intellectual Property Code, a “mark” means any visible sign capable of distinguishing the goods (trademarks) or services (service marks) of an enterprise and shall include a stamped or marked container of goods.

The 2023 Trademark Regulations now expressly recognize non-traditional marks such as position marks, motion marks, and hologram marks and provide the requirements for the submission of the reproduction of the mark.

A position mark is a figurative, mixed, color or three-dimensional sign that is applied to a specific part of, or in a specific position on, the goods that the mark distinguishes. Such marks are placed consistently in the same position on the goods. ¹¹

In the trademark application for a position mark, the applicant must submit a drawing that shows the placement of the mark and its size or proportion, together with a description of the positioning. ¹²  Additionally, when the application includes a disclaimer, the applicant should use broken lines to identify the disclaimer. ¹³

A motion mark, or a movement mark, is perceived as a video clip or a short film used to distinguish goods or services in the context of visual or video communications to the public. It may be used to distinguish digital products and services on portable devices. ¹⁴ An example is the Windows logo upon starting the computer, which is an old Microsoft trademark.

If the mark involves a motion mark, the applicant must submit a clear and correct sequence of still images that correspond to the movement depicted. There are no limitations of the images, but they must be in the form of a single .jpeg file. There must also be a clear and detailed description explaining the movement in sequential order. The applicant may also submit a .mp4 format or a .gif format. ¹⁵ Additionally, when an application involves a priority claim with varying representations, such as one in still images and the other in a video file, the application will be accepted if all elements of the video file and their complete movement are clearly identifiable in the sequence of still images. ¹⁶

A hologram mark is a figurative sign that gives a seemingly three-dimensional view of the sign depending on the angle at which the sign is seen. An example of a hologram trademark involves a premium gift card that changes colors depending on the angle it is viewed. ¹⁷

For the reproduction of the hologram mark to be acceptable, the applicant must submit each of the various views which show all the material features of the mark, and that it must be filed in a single .jpeg file. The multiple views must have only one commercial impression. As for simple holograms, a single representation may be acceptable. ¹⁸ Additionally, when an application involves a priority claim with varying representations, such as one represented in a series of images and the other in a video file, the application will be accepted if all the elements of the video file and the different stages of the holographic effect are clearly identified in the series of graphic or photographic images. ¹⁹

As to Three-dimensional marks, the new Regulations require the submission of one drawing of such mark in a single perspective view if it sufficiently depicts all its features. ²⁰ If one drawing is inadequate, multiple perspectives up to six perspectives may be submitted (e.g., front view, side view, etc.). Additionally, when the application includes a disclaimer of a certain shape or essential element of a shape, the parts claimed should be shown in solid lines, while the unclaimed parts should be shown in broken lines. ²¹

Three-dimensional marks usually involve a shape, which is visually perceptible and is capable of being represented graphically. ²² An example of a device adjoined to the product include a miniature reproduction of an hourglass or a bell appended to the neck of alcoholic beverages. Another example is a shape embodied in the product or in a part thereof, such as the shape of a Toblerone chocolate. Another example is a shape of a container or packaging, such as a shape of a particular beer bottle. ²³

As for sound marks, feel marks, taste marks and scent marks, these non-traditional marks are not recognized in the Philippines. The limitation is stemmed from the IP Code which defines a mark as any “visible” sign distinguishing the goods or services of an enterprise. For the Philippines to afford protection to these non-visual marks, a new law must be enacted.

Trademark Application

To further streamline administrative procedures in the registration of marks, the 2023 Trademark Regulations provide modified provisions on the filing date, filing fees, priority claims, and disclaimers vis-à-vis the trademark application.

Under the Revised Trademark Regulations of 2017, the filing date of an application shall be the date on which the IPOPHL received the required fee and specific information from the application, which now, under the new Regulations, include the official email address of the applicant and the representative, if any. Also, communications are deemed to be filed/received on the date sent online, unless payment is required, in which case the date of receipt is when communication is made together with full payment of the fees. ²⁴

As for the provisions on filing fees, under the Revised Trademark Regulations of 2017, the payment of the publication for opposition fee is required only during the course of the processing of the application. The new Regulations now require a one-time payment of the filing fee which include the fees for the publication of the application in the e-gazette. The applicant may pay in advance the convention priority claim fee, priority examination fee and the issuance and second publication fee. ²⁵

Furthermore, a deadline is now provided for the payment of fees under the new Regulations.  The applicant is only allowed three (3) calendar days to complete the filing fees in order to be accorded the original filing date. Neither partial payment nor refund of the filing fees is allowed. To put such applications in order, the IPOPHL provided a reckoning period and grace period. ²⁶

As for other provisions on disclaimers, under the Revised Trademark Regulations of 2017, there exists an enumeration of portions of the mark, which must be disclaimed. The new Regulations added a mark’s “functional portion” to the enumeration of portions that must be disclaimed. ²⁷ As reiterated above, there are new provisions on how to present disclaimers in the application regarding non-traditional marks such as three-dimensional marks, position marks and color marks.

As to the priority claim, the applicant is now given one (1) year from the mailing date to submit a copy of the foreign registration.

Finally, regarding the actions of the examiner, the new Regulations added a flexible provision which states that in case the examiner finds factual basis to reasonably doubt the veracity of any indication or element in the application, the examiner may require the applicant to submit an affidavit of good faith or sworn statement of ownership, among others. ²⁸

Requirements After Registration

If the registrant desires to cancel the registration, the new Regulations now require that the verified petition for cancellation be published in the e-Gazette for fifteen (15) days for the public’s information. The date of the cancellation shall be the date when the request was approved by the IPOPHL. ²⁹

For the recordal of the assignments executed abroad, the document is now required to be authenticated or apostilled, as appropriate. ³⁰

For trademark license agreement, it must include a statement to the effect that there must be effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If such inclusion of quality control is absent, or not effectively carried out, the agreement will be invalidated. ³¹

On Petitions and Appeals

In line with the quasi-judicial function and exercise of judicial discretion by the IPOPHL Director, as well as the objective of the 2023 Trademark Regulations to further streamline administrative processes, the Appellant’s Brief may now be filed together with the Notice of Appeal or Petition.