Philippines trademark protections go beyond words and logos

Traditionally, trademarks consisted of brand names and logos used to distinguish one trader’s goods from those of another. Today, however, businesses invest heavily in product design, packaging and visual presentation. Consumers recognise products not only by reading their label but also by their shape and overall look. A distinctive bottle, container, package or product configuration may become so closely associated with a particular source that consumers immediately recognise the product as originating from that source even without a word mark.

As non-traditional forms of branding become increasingly important, trademark law has evolved to accommodate them. The Intellectual Property Office of the Philippines issued a memorandum circular in 2023, which expanded the scope of registrable marks to include a broader range of non-traditional visual trademarks, such as three-dimensional marks, colour marks, position marks, motion marks and hologram marks. The amendments reflect the continuing evolution of trademark law and align Philippine practice with international developments.

To facilitate the registration of these marks the circular provides detailed guidance on how these marks should be represented in trademark applications. For example, three-dimensional marks may have to be represented through multiple perspectives. Colour marks may require descriptions of colour shades and arrangements, while motion and hologram marks may be supported by sequences of images, videos or other visual representations. Broken or dotted lines must be used where appropriate to indicate disclaimed or unclaimed features.

Substantive hurdles for non-traditional marks

While the regulations establish the procedural framework for the registration of these non-traditional marks, the more challenging questions often arise at the substantive level. Not every product shape, colour or visual feature is entitled to trademark protection. The law distinguishes between features that merely form part of the product itself and those that genuinely function as a source identifier. For three-dimensional marks in particular, the challenge often lies in proving distinctiveness and/or navigating the functionality doctrine.

The three-dimensional mark must be sufficiently unusual or non-ordinary such that consumers perceive it as an indicator of source. In assessing this requirement, trademark authorities often consider whether the shape departs significantly from customary or industry standard designs. A peculiar or striking configuration that is not commonly found in the relevant trade is more likely to be perceived as identifying a particular source and therefore capable of trademark protection.

Aside from distinctiveness, applicants for three-dimensional marks must also overcome the functionality bar. The intellectual property (IP) code excludes from registration shapes that are functional or dictated by technical factors. Jurisprudence has generally defined a product feature as functional if it is essential to the use or purpose of the article or if it affects the article’s cost or quality. Put differently trademark protection should not be used to grant exclusive rights over product features that competitors need to manufacture or effectively compete in the market for the same goods.

Secondary meaning for 3D marks

However, section 123.2 of the IP code recognises that shapes and product configurations that may be necessitated by technical factors may nonetheless function as trademarks when they have acquired secondary meaning through exclusive and continuous use. Thus, even where a product shape or packaging configuration may initially be perceived as being influenced by technical factors, it may qualify for trademark protection if consumers recognise the shape as identifying a single commercial source. Proof of substantially exclusive and continuous use in the Philippines for at least five years may be accepted as prima facie evidence that the mark has acquired the distinctiveness necessary for registration.

This exception is not without limits. The doctrine of secondary meaning does not apply to shapes or configurations that have become the common, customary or generic designation of the goods themselves. A three-dimensional mark or product shape cannot be monopolised merely because it has been used extensively in commerce if it has become the ordinary or industry standard form.

These limitations underscore the delicate balance that trademark law seeks to maintain between protecting valuable brand identifiers and preserving fair competition in the marketplace. The recognition of non-traditional marks reflects the reality that modern branding extends beyond word marks and logos, with businesses increasingly relying on product shapes, packaging configurations, colours and other visual elements to distinguish their goods and services.

Ernest Luigi A Manzanares is an associate at Federis & Associates Law Offices