New Philippine IP rules protect non-traditional visual trademarks

By Amanda Carlota, Federis & Associates Law Office
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Non-traditional visual trademarks are now protected under revised rules and regulations introduced by the Intellectual Property Office of the Philippines (IPOPHIL). The Revised Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers took effect on 14 February 2023.

The rules institutionalise protection of non-traditional visual trademarks such as three-dimensional marks, colour marks, positional marks, motion marks and hologram marks. IPOPHIL’s director general, Rowel Barba, says such marks are now explicitly considered registrable by IPOPHIL’s Bureau of Trademarks. This article outlines specific guidelines for representation of such marks.

The guidelines

Amanda Carlota, Federis & Associates Law Office
Amanda Carlota
Federis & Associates Law Office

A three-dimensional mark is the shape of a product or its packaging. Iconic examples of these include: the contour-fluted lines of a Coca-Cola bottle, inspired by the gourd-shaped cocoa bean; Toblerone chocolate bar triangles, shaped after Switzerland’s iconic Matterhorn; and Pepperidge Farm’s crackers, shaped like goldfish because the inventor’s wife’s astrological sign was Pisces. Applicants may submit one drawing of the mark in a single perspective view if it sufficiently depicts all its features. If one drawing is not sufficient, applicants may provide up to six perspectives, each properly labelled from front view, side view, etc.

A colour mark consists of a colour that is not defined by a given form but that nevertheless has acquired a secondary meaning, becoming distinctive as a result of prolonged commercial use. Arguably the most recognisable example of this is Tiffany Blue, the distinctive robin’s egg blue used by Tiffany & Co on all its packaging. Applicants must provide a sample of the colour and its description to be claimed in ordinary language. In case of multiple colours, a description of the systematic arrangement of the colours must also be provided. If the description is complex, applicants may include pictures showing the colours as applied on the goods, packaging or services. Applicants may also include a designation from an internationally recognised colour matching or identification system (e.g. Pantone).

A position mark is placed on or affixed to the product in a specific way. Examples include Levi’s red tab, a small red label embroidered in white lettering and sewn on the right back pocket of Levi Strauss & Co jeans, and the signature red soles that characterise all shoes designed by Christian Louboutin. Applicants must provide a reproduction of the mark showing its placement and size or proportion relative to the goods or packaging. Applicants may also include a description of the positioning of the mark.

A motion mark consists of moving images that may be accompanied by sounds. One example is the old Microsoft Windows logo, which depicted a flag waving in the wind. Another example is the old Nokia welcome screen, which showed two people’s hands reaching out for a handshake, to the tune of a phrase taken from the composition Gran Vals by Francisco Tárrega. Applicants must provide a clear and correct sequence of still images that correspond to the movement depicted, along with a detailed description explaining the movement in sequential order. Applicants may also include a video clip in mp4 format, or a series of still images in a graphic interchange format (gif).

A hologram mark consists of a three-dimensional holographic image. Very few hologram trademarks have been successfully registered to date. One notable example is the hologram image in the centre of American Express cards. Applicants must provide multiple views that show all the material features of the mark, but the multiple views must have only one commercial impression.

Paperless application

Aside from the protection of non-traditional trademarks, the revised rules also formally implement fully automated and paperless transactions. This means that all trademark applications and related communications must be submitted through eTMFile, the IPOPHIL’s online submission system. Any other communications, such as responses to office actions and subsequent requests, should likewise be submitted online through eDocFile, the IPOPHIL’s electronic document filing system.

However, under exceptional circumstances, the director general may allow communications to be filed via email, personal delivery, private courier or registered mail. Any correspondence from the Bureau of Trademarks will be sent to the applicant’s email address on record. All applicants are now required to provide their email and physical addresses, as well as those of their representatives, if any. Consequently, communications are deemed filed and received on the date they are sent online, whether via email or through eTMFile or eDocFile. But if payment of fees is required, then the date of receipt is when the communication together with full payment is transmitted.

Amanda Carlota is an associate lawyer at Federis & Associates Law Office

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