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Understanding the impact of Memorandum Circular No. 2023-001, S. 2023 on motion marks in the Philippines

Introduction

Intellectual property laws are continually evolving to adapt to the dynamic nature of innovation and branding. In this context, the Philippines has taken a significant step forward with the issuance of Memorandum Circular No. 2023-001, S. 2023. This new circular replaces previous guidelines and notably includes explicit recognition of the registrability of motion marks, providing a robust framework for brand owners and legal practitioners.

Significance of the new circular

The advent of Memorandum Circular No. 2023-001 brings about a welcomed update to the intellectual property landscape in the Philippines. While prior guidelines offered a foundation for dealing with motion marks, especially those with varying representations like still images and video files, the new circular broadens this scope. It explicitly acknowledges the registrability of motion marks, thereby enhancing the legal mechanisms available for their protection.

Practical implications

The formal recognition of motion marks in the new circular has practical ramifications for brand owners seeking diversified avenues for brand protection. Now, with explicit guidelines in place, brand owners can have more confidence in registering and protecting their motion marks in the Philippines. The circular provides a much-needed layer of legal clarity, enabling a more standardized approach to the registration and defense of these dynamic forms of trademarks.

Descriptive clarification

The new circular also maintains the emphasis on clear identification between different types of motion mark representations. If a motion mark is applied for using a sequence of still images, the guidelines suggest that a descriptive text may be required to clarify the subject matter. This provision serves as an additional tool for achieving specificity and alignment between varying representations of a motion mark.

Global context

The updated guidelines set forth by Memorandum Circular No. 2023-001 are not only significant domestically but also have implications on a global scale. As Philippine brands look toward international markets, and as foreign brands consider entry into the Philippines, these standardized guidelines could serve as a catalyst for a more harmonized approach to intellectual property rights concerning motion mark.

The issuance of Memorandum Circular No. 2023-001, S. 2023 marks a progressive step in the Philippines’ intellectual property regime. By explicitly recognizing the registrability of motion marks, it fills a crucial gap in the previous guidelines, providing brand owners and legal professionals with a more comprehensive and clear framework. As we move further into an era characterized by dynamic and multimedia-centric branding, these updates signify a positive and timely development in Philippine intellectual property 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. 

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? 

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. 

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.

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. 
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