IP Updates – BCCS Law

DAU Upon Renewal is Now Required

The Philippine Intellectual Property Office recently issued the amended Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017. One of the new the requirements of the amended regulation is the filing of a declaration of use within 1 year from the date of renewal of a trademark. The requirement applies to all renewal applications due on or after 1 January 2017, even if the mark has been renewed prior to the effectivity of the new regulation on 1 August 2017. The requirement applies to International Registrations designating the Philippines.

Andre is my Valentino…

And that is enough explanation to thwart an opposition (IPC No. 14-2011-00402) filed by Valentino S.P.A. according to the Bureau of Legal Affairs of the Intellectual Property Office. Valentino S.P.A., the owner of the VALENTINO mark, opposed an application for the mark “Andre Valentino”. According to the applicant, “Andre” was the name she used when she began her business and “Valentino” commemorates the day she began her business, I.e., Valentines Day. Never mind the fact that the mark completely appropriates the element “VALENTINO”. Assuming that the applicant came up with the mark in good faith, surely consumer confusion should be given more consideration becasue of the use of the name “VALENTINO”.

Wine Not?

A local company applied for the mark “Champagne Bubbly” for non-wine goods – specifically, for perfume and other bath and personal care products. This encountered an opposition primarily hinged on “champagne” being supposedly only used for sparkling wine wholly produced from Champagne, France.

The Intellectual Property Office (IPO) took the contrary position and maintained that “Champagne Bubbly” is eligible for registration. While it is a fact that “champagne” is a controlled appellation of origin, wine is unrelated to and cannot in any way be confused with the products on which Applicant intends to use the contested mark. The decision discussed the basics of trademarks laws: that trademark laws were born out of the need to point out the origin and ownership of goods. The IPO mentioned that without a doubt, the Champagne region is known for its wine and not for perfume and other bath and personal care products. Ergo, there can be no confusion as to origin.

Should the IPO have considered dilution?

A Patented Logo? No Such Thing.

Patents and trademarks are both intellectual properties, for sure, but the two cannot be interchanged. Interestingly, a recent article from a reputable local daily reported about a certain popular festival’s logo being patented with the Intellectual Property Office (IPO). It warned individuals and entities from using said “patented logo” in their respective businesses to ride with the popularity of the merrymakings without the owners’ permission. It even went on citing Section 71 of the Intellectual Property Code (“the Code”), enumerating the rights of owners of patents.

True enough, Section 71 enumerates the rights of owners of patents, period. But a patented logo? There is no such thing.

The IPO would not have registered the same as a patent if it applied for one. What the article should have referred to was a trademark – and not a patent – registration. Section 121.1 of the Code defines a “mark” as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise.”

Meanwhile, Section 21 of the Code explicitly reserves patents for “any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable… It may be, or may relate to, a product, a process, or an improvement of any of the foregoing.”

The prominent festival’s logo is used for promoting the event or branding, and is in no way an invention per se. Simply put: branding indicia gets registered as a trademark, not as a patent.

Exceptions to the IPOPHL Increase in Fees

Increased official fees will take effect on 1 January 2017, subject to the following exceptions:

(1) All Statements of Account (SOAs) issued in 2016 based on the old rates may be paid within the period of validity of the SOA even if the actual payment is made in 2017, provided the SOA remains valid on the date of payment;

(2) Where an extension of time to pay was granted in 2016 and the new due date falls in 2017, such payment will be based on the old fee structure and any SOA to be issued pursuant to such extension will be based on the old rates;

(3) Payments that are due on days when IPOPHL is closed (from 24 December 2016 to 2 January 2017) will be accepted on 3-6 January 2017, and any SOA issued or to be issued will follow the old fee structure.

IPOPHL Fees Update

The Intellectual Property Office of the Philippines (IPOPHL) has removed the entire section on discounts extended to online filings of applications in its new schedule of fees that will take effect on 1 January 2017. Informal inquiries with officers of the IPOPHL revealed that the section was purposely deleted as it is the intention of IPOPHL to no longer extend such discount. Thus, online filings of applications will be assessed the same application fee as manual filings made before the IPOPHL.

The Title Says it All – “An Aerodynamic Fan Blade”

In Asahi Electrical Manufacturing Corp. vs. Reginald Joseph O. Chua, the Bureau of Legal Affairs (BLA) cancelled Chua’s certificate of industrial design. Among the grounds cited by the Bureau of Legal Affairs (BLA) in cancelling the registration was the fact that the design was dictated by technical or functional considerations. Section 113.2 of the Intellectual Property Code provides that industrial designs dictated by technical or functional considerations to obtain a technical result shall not be protected. Although not mentioned by the BLA in its decision, the title itself of the registration betrays it – An AERODYNAMIC Fan Blade. Chua shot himself in the foot when he called the fan blade AERODYNAMIC.

It’s Not Called “The Old Spaghetti House” for Nothing

Café de Coral Assets Ltd. (CDC) opposed the application of Albertito Guerero for “The Old Spaghetti House” based on the former’s “The Spaghetti House” trademark registration worldwide including the Philippines. While CDC was able to show that it had a prior registration in the Philippines, CDC and its predecessor-in-interest were actually not able to use the mark in the Philippines. CDC filed an affidavit of non-use on the basis that it is still looking for a suitable franchisee in the Philippines. The Bureau of Legal Affairs (BLA), however, considered this excuse to be unacceptable. Mr. Guerrero was thus able to show that he was the first one to have used “The Old Spaghetti House” mark in the Philippines, and was in fact the “OLDER” Spaghetti House. The decision of the BLA may be accessed here.

IPOPHL to Amend IP Code

The Philippine Trademark Office is in the process of drafting amendments to the Intellectual Property Code of the Philippines. Our Firm’s partner, Joseph Sarmiento, is working closely with the International Trademarks Association (INTA) through his INTA Committee to implement much needed changes to make Philippine trademarks practices in tune with the times.

Among the amendments that will be proposed is the deletion of the requirement that an application that claims priority from a foreign registration should be registered in the country of origin first. This has been the bane of foreign applicants as this requirement is an unusual requirement that does not conform with the Paris Convention. Further, as Philippine trademark applications are now examined with relative dispatch (within a month or 2 from filing), a trademark application that claims priority from a foreign application is at a disadvantage as it will have to wait for the priority application to mature to registration first (which can take years in some countries).

IPOPHL Revises Fee Structure

The Philippine Intellectual Property Office (IPOPHL) will increase its official fees effective 1 January 2017. To minimize costs in pursuing intellectual property rights protection before the IPOPHL, we recommend filing any applications that are in the pipeline before the end of the year. For more information on the revisions, you may click this link.

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