The Philippines has introduced new trade mark regulations which will allow a greater range of non-traditional visual trade marks, require electronic communication and online filing, advanced payment of fees, and apostilled supporting documents. Additionally, the criteria for determining whether a mark is well-known has been removed.
The trade mark regulations took effect on 15 February 2023, replacing the 2017 regulations. The substantive changes are as follows:
1. Non-traditional visual trade marks are now acceptable.
The 2023 Trade Mark Regulations take the Philippines closer to other developed countries by allowing the registration of non-traditional visual trade marks such as:
- Colour marks not defined by a given form
- Position marks
- Motion marks, and
- Hologram marks.
The changes are in addition to the traditional visual trade marks and 3-dimensional marks that were already registrable in the Philippines.
While Collective Marks and Certification Marks are not new, the 2023 rules require that the applications for these marks are accompanied by a copy of the agreement governing the use of the collective mark or a copy of the standards set by the certifier governing the use of the certification mark.
2. Clear definition of “Actual Use”. Signages are now acceptable as proof of use.
The 2023 Trade Mark Regulations also define “Actual Use” as “use in the ordinary course of trade that demonstrates real commercial purpose targeting the public”. The definition may settle disputes as to whether internal samples and products not for sale to the public would qualify as use.
Regarding proof of use, signage bearing the mark on a facade or any area in the establishment where the mark is displayed are now acceptable. This is helpful in proving the use for services in the Philippines.
3. Online filing and electronic communication are now the standard.
The IPOPHL required online filing and communications during the pandemic and has worked to perfect its system over the last two years. The 2023 Trade Mark Regulations now require all filings and submissions to be done online and all communications to be issued electronically, except under specific exceptional circumstances. All filing and submissions must be made using IPOPHL’s eTMFile and eDocFile. In addition, the Applicant or its representative’s email address is now a requirement in trade mark applications, as all communications will be sent to the official email address. Files must be attached as PDFs, and any filing and communication are considered filed/received on the date sent.
While scanned copies of documents in PDF are acceptable, the IPO may still require the submission of the original or certified true copies.
4. Publication Fees are now required to be paid at the time of application.
The publication for opposition fee and the second publication fee are required to be paid at the time of application to streamline processing. The publication fees are forfeited if the mark is successfully opposed or the application is refused.
5. Applications with convention priority are now given one year to submit proof of registration of the priority application from the issuance of the Notice of Allowance and Deferment of Publication. A one-time one-year extension is available.
The 2017 rules provide for six months to submit the proof of registration and a 1-year extension.
6. Assignment and transfer documents executed outside the Philippines must be notarized and legalized/apostilled.
This is a more onerous requirement compared to the 2017 Rules, which accept simply notarized copies.
7. The Criteria for determining whether a mark is well-known has been removed. There is no similar provision on well-known marks under the IP Code.
The 2017 Rules contain the very important Rule 103, listing the criteria for determining whether a mark is well-known. This was removed in the 2023 Rules. Without similar criteria listed in the IP Code, it would be difficult to claim that a mark is well-known. Applicants may resort to some limited jurisprudence discussing the criteria.
To date, the IPOPHL has declared very few marks as well-known in its decisions. In 2010, a list of marks declared well-known by the IPOPHL was circulated. From 1998 to 2010, only 33 marks were declared well-known. No similar list has since been published by the IPOPHL.
Perhaps the IPOPHL will establish a well-known mark registry instead? We will have to wait and see!