IPOPHL: Revised trademark rules take on Feb. 14

THE Intellectual Property Office of the Philippines (IPOPHL) has announced the issuance of the revised rules and regulations on trademarks, service marks, trade names and marked or stamped containers.

Replacing the revised trademark regulations of 2017, IPOPHL said the new rules under Memorandum Circular (MC) 2023-001 prepared by the Bureau of Trademarks (BOT) took effect on Tuesday, February 14, 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,” IPOPHL Director General Rowel S. Barba said.

According to IPOPHL, the amendments list down “acceptable” representations of non-traditional marks, particularly drawings that depict a series of movements.

IPOPHL said the circular also specifies that 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 of 1997,” IPOPHL said in a news statement issued on Wednesday.

Moreover, the agency said the amendments also formally implement the mandatory online filing that has been in place since September 2020.

“All communication with the BOT shall now be transmitted via online platforms e-tmfile and edocfile for Trademarks while messages coming from the BOT will be transmitted via e-correspondence,” IPOPHL said.

This means, the agency noted, that the trademark applicants or their appointed agent/representative shall be required to ensure that their email address is updated in the system.

IPOPHL said it may provide an exception in receiving physical documents or hard copies under “exceptional” circumstances, such as natural calamity and prolonged system downtime, or the director general may decide.

“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 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.

According to IPOPHL, the amendments are designed to support its six-point BRIGHT Agenda, which it said instills the goals to transform IPOPHL into a “fullydigitized” agency and raise the ante for customer service.

Meanwhile, in a separate issuance, namely, MC 2023-002, IPOPHL said the trademark bureau 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 favorable to applicants, particularly MSMES [micro, small and medium enterprises],” IPOPHL said.

In the previous rule, the agency said 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, IPOPHL said.