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.

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.

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.  

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.  

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