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New Trademark Forms

The Philippine Trademark Office has issued new forms for trademark applications, declarations of use, renewals, etc. The old forms will only be accepted until December 2016. 

May the Power of Trade Names Compel You

The Bureau of Legal Affairs (BLA) has recently issued decisions that sustained oppositions on the basis of trade names or corporate names. 
 
In the case of Aura Hotels and Resorts vs. Racher SNV Inc., the BLA sustained an opposition filed by Aura Hotels for the Racher’s trademark application for AURA covering hotels and restaurant services. In the case of MUHLE GMBH & CO. KG vs. Rishi N. Mirani for the latter’s trademark application for MUHLE GLASSHUTE, the BLA sustained the opposition of MUHLE GMBH on the basis that its trade name had the word “MUHLE”, even if MUHLE GMBH was not able to prove that its mark was well known in the Philippines.
 
In both of these cases, it has to be noted that the applicants applied for the marks in question covering goods/services that are being offered or distributed by the opposers. 

Amended Inter Partes Rules: The Salient Points

Here are some of the salient points of the amended rules on Inter Partes  Proceedings.

1. The period to file a notice of opposition and answer has been extended from 90 days to 120 days, restoring the original period under the previous Inter Partes rules.

2. For opposition documents executed abroad, authentication may be secured after filing of the opposition case provided that the execution of the opposition documents is prior to such filing and that proof of authentication is submitted prior to the issuance of default order or conduct of preliminary conference.  Notably, there appears to be no similar provision in respect of authentication of answers.  Thus, it apppears that authentication of answers must still be done before their filing.

2. The Hearing/Adjudication Officers is now authorized to issue and sign decisions and final orders.  Previously, this authority was reserved only to the Director of Bureau of Legal Affairs and the Committee of Three (in petitions to cancel patents).

3. The decisions or final orders in Inter Partes cases must now be issued within 60 days from the date the case is deemed submitted for resolution.

4. The appeal to decisions or final orders issued by Hearing/Adjudication Officers must be filed with the Director of the Bureau of Legal Affairs prior to the appeal with the Director General of the IPO.  This adds another layer to the appeals process.  

Subtitles To Be Required

Television broadcasters and producers of television programs will soon be required to broadcast their programs with subtitles for the benefit of the hearing-impaired viewers as required by The Closed Caption Law. The implementing rules and regulations are to be issued within 120 days from the effectivity of the new law. Content producers should monitor the issuance of the implementing rules and regulations, and how this may affect them.  

Viva La Madrid

The Philippine Supreme Court dismissed the petition filed praying for the nullification of the Philippines’ accession to the Madrid Protocol. The Philippines acceded to the Madrid Protocol on 25 April 2012 by way of an executive agreement. This manner of accession was questioned on the basis that the Madrid Protocol is a treaty that requires ratification by the Philippine Senate. Foreign trademark proprietors may now breathe easy knowing that the Madrid Protocol is here to stay. A copy of the decision may be accessed here. 

May the real John Lloyd please stand up?

An applicant trying to appropriate the mark “JOHN LLOYD” was successfully opposed by John Lloyd Cruz himself. The Bureau of Legal Affairs rightfully sustained the opposition filed by the real John Lloyd as the mark consists of the name of a living individual. While the applicant did not include the family name “Cruz”, The BLA held that the prohibition of the law does not require that the full name be used. It is enough that the name used clearly refers to such individual. In this case, “JOHN LLOYD” identifies a specific living individual who is so well known that a connection between the applicant and the real John Lloyd would be assumed. 

Can copyright subsist in a useful article?

Since copyright subsists from the moment of creation without any formality requirement, it is easy for someone to claim copyright ownership over an object with artistic features. 
 
In the case of Sison Olaño, et al. vs. Lim Eng Co, G.R. No. 195835, the Supreme Court explained that a hatch door is not an artistic work within the meaning of copyright laws, but is intrinsically a useful article, which, as a whole, is not eligible for copyright.  The only instance when a useful article may be the subject of copyright protection is when it incorporates a design element that is physically or conceptually separable from the underlying product.  
 
To illustrate, a belt, being an object utility with the function of preventing one’s pants from falling down, is in itself not copyrightable but an ornately designed belt buckle which is irrelevant to or did not enhance the belt’s function hence, conceptually separable from the belt, is eligible for copyright as sculptural work with independent aesthetic value, and not as an integral element of the belt’s functionality.  In the same manner, a table lamp, being a functional object intended to provide illumination in a room, is not copyrightable.  The general shape of a table lamp is not copyrightable because it contributes to the lamp’s ability to illuminate the reaches of a room.  However, a lamp base in the form of a statue of male and female dancing figures of semi vitro us china is copyrightable as a work of art because it is unrelated to the lamp’s utilitarian function as a device to combat darkness.  

To Chow Is To Eat

The Bureau of Legal Affairs of the Intellectual Property Office, in its Decision No. 2016-109, explained that although the word “CHOW” was originally considered as descriptive, the doctrine of secondary meaning applies as evidence shows that the CHOW mark has been used by and closely associated with Nestle for animal food in the Philippines. Hence, if some other party will appropriate the word “CHOW” for its marks covering animal food products, it is highly likely that consumers will be misled to believe that the goods came from the same source. 
 
As explained by The Supreme Court in the earlier case of Philippine Nut Industry, Inc. vs. Standard Brands Incorporated (G.R. No. L-23035), this doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market; might nevertheless have been used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.  This doctrine is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law and subsequently adopted in Section 123.2 of the IP Code of the Philippines. 

Advertising Services in Class 35

It has recently been the policy of the Intellectual Property Office (IPO) to issue office actions against trademark applications/registrations covering Class 35 clarifying whether the applicant or registrant is an advertising agency. The IPO has apparently taken the position that advertising in Class 35 is limited to advertising for others, such as an advertising agency. This sudden change in policy has resulted in the issuance of office actions even on existing registrations during the renewal process or when declarations of use are filed.  If one is not an advertising agency, the IPO will require the deletion of “advertising services” from the specification of services in Class 35. If you have similar issues, do not hesitate to contact us.