News & Updates

The Philippine Intellectual Property Office (“IPO”) recently promulgated IPOPHL Memorandum Circular No. 2023-001, otherwise known as the Trademark Regulations of 2023, introducing significant changes to the rules and regulations governing trademarks, service marks, trade names, and marked or stamped containers.  It amended the Revised Trademark Regulations of 2017 Memorandum Circular No. 17-010 or and the IPOPHL Revised Fee Structure of 2017 (Memorandum Circular No. 16-012).  The Trademark Regulations of 2023 took effect on 14 February 2023.

Definitions

The new rules define a “certification mark” as “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 was performed by members of a group or associations”. The definition of “translation” was updated to “the equivalent meaning of a word in one language in another language such as expressing a French word into English”, and “transliteration” is now defined as a “means of converting 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 Roman or Latin alphabet.”

Renewal Declaration of Actual Use

For purposes of filing the Renewal Declaration of Actual Use (“DAU”), the new rules clarified that this may be filed within the six-month period before the expiration of the trademark registration sought to be renewed. Thus, the Renewal DAU may be filed in advance of the renewal of the trademark registration.

Power of Attorney

For applicants or registrants transacting with the IPO through authorized representatives, the new rules provide that if the Power of Attorney is not filed within the two (2)-month period following the mailing date of an Office Action requiring submission of the same, the application may be abandoned.

Reproduction of three-dimensional marks, position marks, and color marks

Aside from the reproduction requirements found in the new rules for the foregoing special types of marks, broken or dotted lines must also be depicted in their representation to show the necessary disclaimers pursuant to Rule 604 thereof. The trademark application must also provide a clear and accurate description of which elements are either claimed or unclaimed portions of the mark.

Inclusion of Publication for Opposition Fee in Filing Fees for New Trademark Applications

The Publication for Opposition Fee is now required to be paid together with the basic fee and color claim fee (if applicable) for purposes of according a filing date for new trademark applications. The old rules previously only required the payment of the publication for opposition fee after the issuance of a Notice of Allowance for pending trademark applications.

Filing Date

The new rules changed the wording of Rule 500 as regards the Filing Date and added a provision on when communications are deemed filed or received. Additionally, Rule 501 is changed to insert the provision specifying filing and other fees. In turn, the old Rule 501 regarding Application Number and Filing date is now Rule 502. Further, Rules 503 and 504 are inserted to include provisions on the online system of mode of filing and the corresponding mailing dates, respectively.

Proceedings in the Examination of an Application for Registration

The old Chapter on the Nature of Proceedings in the Examination of an Application for Registration is removed. Further, the previous Rule 605 is renumbered to Rule 601 and included goods or services related to preparing or responding to pandemics or public health emergencies as an additional circumstance for priority of action.

Action by the Examiner

The new Rule 603 inserted a provision allowing the applicant to submit evidence in cases where the IPO finds factual basis to reasonably doubt the veracity or elements in the application to remove the doubt.

Disclaimers

Rule 604 on Disclaimers now require the functional portion of the trademark to be disclaimed. Additionally, three-dimensional marks should now be indicated with solid and broken lines to designate the claimed and unclaimed parts, respectively.

Amendments to Communications

Rule 607 under the new rules now specifies that the IPO shall only accept communication sent through the online submission system.

Suspension of Actions

As regards Rule 613 on suspension on actions, the Examiner’s action is now allowed to be suspended while awaiting applicant’s response.

Submission of Foreign Registration; Priority Claim

The new Rule 614 changed the time within which a copy of the foreign registration may be filed. An application claiming priority right must submit a copy of the foreign registration within one (1) year from the mailing date of the Notice of Allowance.

Changes to the Publication of Voluntary Cancellation

With regard to the Cancellation of the Registration, Rule 1001 is amended to require the publication of the voluntary cancellation in the eGazette.

Foreign Deeds of Assignment

The new rules likewise updated Rule 1101 to provide that if the assignment of the mark is executed or notarized abroad, the document must be authenticated or apostilled, as appropriate.

Trademark Licenses

Rule 1107 was amended to additionally require a provision regarding the effective quality control on the part of the licensor as regards the goods and services of the licensee in order to be valid.

Amendments to the IPOPHL Revised Fee Structure of 2017

MC No. 2023-002 updated the Schedule of Trademark-Related Fees requiring the payment of the Publication for Opposition Fee simultaneously with the Basic Fee for Trademark Applications, charging as follows: