New trademark rules for protecting non-traditional marks, mandating online transactions take effect

The Intellectual Property Office of the Philippine (IPOPHL) has promulgated the Revised Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers.

Replacing the revised trademark regulations of 2017, the new rules under Memorandum Circular (MC) 2023-001 prepared by the Bureau of Trademarks (BOT) took effect on 14 February 2023.

“MC 2023-001 institutionalizes the protection of non-traditional visual marks. With this, IPOPHL is now clear with the acceptability of color marks per se, motion marks, position marks and hologram marks,” Director General Rowel S. Barba said.

The amendments list down acceptable representations of non-traditional marks, particularly drawings that depict a series of movements. It also specifies applications should include only one drawing representation in a single-perspective view if the mark sufficiently depicts all features.

The draft rules also recognize that color marks, 3D marks, position marks and motion marks may be filed as long as the marks portray an acquired distinctiveness as defined under the IP code.

The amendments also formally implements fully automated transactions. While the mandatory online filing has already been in place since September 2020, the office still accepted, and in some cases, required the submission of physical and original documents to the office and at the same time issued physical copies of office actions and correspondences.

With these revised rules, the BOT will now institutionalize paperless transactions as all communications shall now be transmitted via online platforms e-TMFile and eDocFile for Trademarks, while correspondences coming from the BOT will be transmitted via e-Correspondence. This means that the trademark applicants or their appointed agent/representative shall be required to ensure that their email address is updated in the system.

The office may provide an exception for transmitting or receiving physical documents under exceptional circumstances such as natural calamity and prolonged system downtime, as may be ordered by the Director General.

The new rules help us in our goal of fully transforming IPOPHL into a future-ready, digital agency that is mindful of sustainability and its environmental footprint,” Barba said.

“We know the sentiments of our stakeholders. For those who are filing trademark applications, we included a provisions that will streamline our processes. To do so, especially in the digital age, we can now make efficient use of technology,” BOT Director Jesus Antonio Z. Ros said.

The amendments are designed to support IPOPHL’s six-point BRIGHT Agenda, which instills the goals to transform IPOPHL into a fully-digitized agency and raise the ante for customer service.

Consultations for the revised rules were held in July 2022.

Meanwhile, in a separate issuance, namely MC 2023-002, the BOT also introduced the amendment on its fee structure. With this, the publication for opposition fee shall now be paid together with the filing fee.

The new payment arrangement will further streamline the trademark registration processes and minimize abandonment of applications due to non-payment of publication fees, making the amendment is favorable to applicants, particularly MSMEs.

In the previous rule, the publication fee is paid once the application has been examined and allowed for publication in the gazette for purposes of opposition. All trademark-related fees, however, remained unchanged.

The new MCs can be viewed through the following links:

• MC No. 2023-001: https://bit.ly/MC2023-001
• MC No. 2023-002: https://bit.ly/MC2023-002 (IPOPHL)