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Trademark Regulations of 2023

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The following post does not create a lawyer-client relationship between Alburo Alburo and Associates Law Offices (or any of its lawyers) and the reader. It is still best for you to engage the services of a lawyer or you may directly contact and consult Alburo Alburo and Associates Law Offices to address your specific legal concerns, if there is any.

Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.

 


AT A GLANCE:

The Intellectual Property Office of the Philippines, through IPOPHL Memorandum Circular No. 2023-001, promulgated Trademark Regulations of 2023 which provides for the rules and regulations on trademarks, service marks, trade names, and marked or stamped containers.


 

Pursuant to the IPOPHL’s authority under the Intellectual Property Code (Republic Act No. 8293) the Rules and Regulations on trademarks, service marks, trade names, and marked or stamped containers was promulgated.

The new rules provide for the following new definitions:

“Actual Use” means use in the ordinary course of trade that demonstrates real commercial purpose targeting the public.

“Certification Mark” means any sign, used or intended for 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, or that the work or labor on goods or services was performed by members of a group or associations.

“Mailing Date” means the date it was initially sent through the e-correspondence system or sent to the designated registered e-mail if the applicant/registrant or its agent as the case may be. In case an office action or issuance has been received both  through e-correspondence and e-mail, the reckoning date will be the later date of receipt.

“Translation” means the equivalent meaning of a word in one language in another language such as expressing a French into English

“Transliteration” means converting of the words, letters or characters from one language to the corresponding words, letters or characters of another language or alphabet by means of their close similarity in sound like expressing Chinese characters into the Roman or Latin alphabet. 

MC No. 2023-001 also lists down the acceptable evidence of actual use of mark. Rule 210 provides that the following shall be accepted as proof of actual use of the mark:

  1. downloaded pages from the website clearly showing that the goods are being sold or the services are being rendered or made available in the Philippines;
  2. photographs (including digital photographs printed on ordinary paper) of the following:
    1.  labels or packaging bearing the mark as actually used on the goods;
    2.  the stamped or marked container of goods; or
    3. signages bearing the mark on the façade or any area in the establishment/s where the mark is displayed.
  3. brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
  4.  receipts or invoices of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines;
  5. copies of contracts for services showing the use of the mark;
  6. such other evidence of similar nature that the Director may determine as acceptable.

Another key feature of these updated regulations is the formal recognition and institutionalization of non-traditional visual trademarks. This includes various types of marks, such as color marks, position marks, motion marks, hologram marks, three-dimensional marks and certification marks.

With respect to the period to file Declaration of Actual Use (DAU) the Circular provides:

Rule 204. Period to File Declaration of Actual Use. – The Office will not require any proof of use in commerce upon filing of an application. All applicants or registrants shall file a Declaration of Actual Use (DAU) of the mark with evidence to that effect and upon payment of the prescribed fee on the following periods:

  1. Within three (3) years from the filing date of the application;
  2. Within one (1) year from the fifth anniversary of the registration;
  3. Within one (1) year from date of renewal;
  4. Within one (1) year from the fifth anniversary of each renewal;

Otherwise, the application shall be refused registration, or the registered mark shall be removed from the Register by the Director.

Rule 205. Extension of Period to File Third (3rd) Year DAU, When Allowed. – For the DAU required to be filed within three (3) years from filing date of the application, a six (6)-month extension period may be granted upon request of the applicant or registrant, provided such request is made prior to the expiration of the three-year period and the required fee is paid. Actual use of the mark may commence within the extension period. The corresponding fee must be paid on the day of the filing of the DAU or the request for extension of time to file the document. The date of payment shall be considered as the date of filing of the DAU.

Rule 206. Renewal DAU. – The Renewal DAU may be filed within the six-month period before the expiration of the registration.

The IPOPHL has also established online systems to facilitate and expedite the filing, transmission, and receipt of official communications and payment, and to formalize the relevant practices in view of the changing landscape. In line with the IPOPHL’s zero-contact policy, the filing of applications or such related communication shall be submitted only through the online submission system, i.e., eTMFile, of the Office. 

Any other communication to the Office can be submitted online using the Office’s online submission system, i.e., eDocFile.

Under exceptional circumstances (e.g., natural calamities, prolonged system downtime), communication to the Office may be filed by electronic means (e.g., e-mail: bot@ipophil.gov.ph), by personal delivery, by courier services, or by registered mail, as may be ordered by the Director General or the Director of Trademarks.

 

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Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding legal services, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/ 0917-5772207/ 09778050020.

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