The Philippines has introduced new trademark regulations. The regulations allow for a wider range of non-traditional visual marks, requiring electronic communication and online applications, prepayment of fees and supporting documents certified by the Hague. In addition, the criteria for determining whether a trademark is a well-known trademark have been deleted.
The Trademark Ordinance, which replaces the 2017 Ordinance, came into effect on February 15, 2023. Some substantive changes are as follows:
- Non-traditional visual marks are now accepted.
The Trademark Ordinance 2023 brings the Philippines closer to other developed countries by allowing the registration of non-traditional visual marks as follows:
- Non-specific color trademarks
- location trademark
- dynamic trademark
- holographic trademark
These changes are in addition to traditional visual and three-dimensional marks that are already available for registration in the Philippines.
Collective marks and certification marks are not new. However, the “2023 Rules” require that when applying for these trademarks, a collective trademark use management agreement or a certification mark usage standard set by the certifier must be attached.
- Clarify what “actual use” means. The logo now serves as proof of use.
The Trademark Regulations 2023 also clearly define “actual use” as “use in the course of ordinary trade to demonstrate the true commercial purpose to the target public.” This definition resolves disputes over whether samples and products not sold to the public are valid for use.
Regarding evidence of use, signage bearing the logo used on the front or other areas of the service premises may be accepted as evidence of use. This helps demonstrate trademark use on services in the Philippines.
- Online applications and electronic communication have been standardized.
During the epidemic, the Intellectual Property Office of the Philippines (IPOPHL) required that applications be submitted and communicated online, and it has been working to improve its system over the past two years. The Trademark Regulations 2023 stipulate that, except for special circumstances, all applications and document submissions must be completed online and all communications shall be sent electronically. All applications and documents must be in IPOPHL’s eTMFile and eDocFile formats. In addition, the email address of the applicant or his representative must be provided with the trademark application so that all communications can be sent to the official email address. Documents must be attached in PDF format and any applications and communications will be deemed submitted/received on the day they are sent.
While the IPO may accept scanned PDF documents, the agency may still require submission of originals or certified true copies.
- The announcement fee is payable during the application stage.
The opposition announcement fee and the second announcement fee need to be paid at the time of application to simplify the procedure. If the trademark is invalid due to opposition or rejection, the publication fee will not be refunded.
- An application claiming priority can submit a registration certificate for the priority application within one year from the date of issuance of the approval notice and announcement extension notice, and the period can be extended for one year at a time.
The 2017 Rules stipulate that the time limit for submitting a certificate of registration is six months, which can be extended by one year.
- Assignment and transfer documents signed outside the Philippines must be notarized and authenticated / Apostille.
Compared with the 2017 Code, which only accepts notarized copies, the above requirements are more stringent.
- The criteria for determining whether a trademark is a well-known trademark have been deleted. There are no similar provisions regarding well-known trademarks in the Intellectual Property Law.
The 2017 Rules include the very important Rule 103, which lists the criteria for determining whether a trademark is a well-known trademark. This part has been deleted from the 2023 Code. If similar standards are not listed in the Intellectual Property Law, it will be difficult to call a trademark a well-known trademark. Applicants can appeal to some limited jurisprudence to discuss the standard.
To date, IPOPHL has recognized few well-known trademarks in its decisions. In 2010, IPOPHL published a list of well-known trademarks. From 1998 to 2010, only 33 trademarks were recognized as well-known trademarks. Since then, IPOPHL has not published any similar lists.
Perhaps IPOPHL will establish a well-known trademark registry? We’ll see!
For further information, please contact:
Claire Corral, Partner, Rouse
ccorral@rouse.com
