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 1. Asia IP
 2. Section
 3. IP Analysts


WHEN IS A 3D MARK DISTINCTIVE?

31 October 2024





The law on trademarks of the Philippines (Part III of Republic Act No. 8293 – IP
Code) defines a trademark as any visible sign capable of distinguishing the
goods or services of an enterprise and shall include a stamped or marked
container of goods. It is broad enough to include almost any visible sign
considered as non-traditional such as position marks, holograms, motion marks,
colour marks and three-dimensional (3D) marks, and the Intellectual Property of
the Philippines (IPOPHL) has issued registrations covering these marks for quite
some time, but it was only on February 14, 2024, with the issuance of the
revised Rules on Trademarks, Service Marks, Tradenames and Marked or Stamped
Containers that examination practices were issued concerning how the marks
should be depicted, the number of views to be submitted, the use of broken and
solid lines to depict elements of the composite marks to be disclaimed and other
procedural matters. 

The IP Code provides a list of the marks that are not registrable, and further
gives an idea of what marks may be considered as not distinctive, e.g.: (i)
those that have become customary or usual to designate the goods or services in
everyday language or an established trade practice; (ii) those that designate
the kind, quality, quantity, intended purpose, value, geographical origin, time
of production of the goods or rendering of the service or its characteristics;
(iii) shapes necessitated by technical factors; and (iv) colours alone. The
IPOPHL would accept as prima facie evidence that said marks have become
distinctive if the applicant can prove exclusive and continuous use in commerce
in the Philippines for five years before the claim for distinctiveness is made. 

A recent decision of the Office of the Director General shows how an application
for a 3D mark was rejected for being not sufficiently distinctive (Green Cross
Inc. v. Director of Trademarks, Appeal No. 04-2023-0017, May 31, 2024). On
September 17, 2020, Green Cross filed a 3D mark application for its bottle
design for rubbing alcohol, rubbing alcohol compounds, sanitizer, and
disinfectant in Class 5. A partial view of the representation of the mark is
shown below. The examiner issued several office actions. 

One of the more significant objections was the order of the examiner to disclaim
the shape of the bottle. The examiner commented that the shape is usual and
lacks distinctiveness. Green Cross did not agree and argued that its mark was
far from being usual or common and averred that its marks consists of an
irregularly shaped rectangular cuboid bottle with a squarish cross-section and
that these elements are not functional, but ornamental, and no other products in
the market for rubbing alcohol and sanitizer use the same bottle shape.  



Green Cross further argued that there are bottle marks which have been
registered even without any label; hence, its mark should also be allowed
because it is claimed to be one of the “most trusted brand of sanitizer and
alcohol in the Philippines today.” The examiner was not convinced and refused
the application. On appeal, the Director of Trademarks (BOT) affirmed the
refusal, and further ruled that the Green Cross’ bottle, when put side-by-side
with other alcohol containers, would look like a generic container, and that the
current design of the bottle without the markings does nothing for the consumer
to differentiate it from the other bottles in the market. On the claim of Green
Cross that its mark has secondary meaning by submitting affidavits of five
persons, the BOT Director said that said five affidavits, which were
unsubstantiated, hardly qualify as a substantial portion of the consuming public
in the Philippines of about 114 million people. Dissatisfied, Green Cross
appealed to the Office of the Director General, claiming that it had provided
evidence more than that required by the Rules, and insisted that its bottle
shape and green colour make its mark distinctive. 

The Director General affirmed the decision of the BOT Director, dismissed the
appeal of Green Cross and ruled as follows:  

The Green Cross bottle design is not distinctive and necessitated by technical
and functional considerations. The side-by-side comparison with the other
alcohol containers in the market shows that the Green Cross bottle is typical.
The BOT Director went so far as doing a Google search of the front view of the
bottle mark which showed other products as visual matches negating the claim
that the design points distinctly to Green Cross. And when another view of the
bottle design is searched, what appears is a stock photo of a standard pump type
hand sanitizer. 

On the claim of secondary meaning, while Green Cross submitted advertisements
and the Nielsen Retail Trade Audit Reports showing Green Cross as a leading
brand in the market, the BOT Director in its Comment to Green Cross’ appeal
stated that his decision rejecting the application was based on the evidence
submitted during the examination proceedings which consisted only of the
affidavits from five individuals who were its merchandisers and grocery store
shoppers, and empty assertions that the mark is a leading brand since 2013.
There were no sample advertisements submitted, and the BOT Director considered
the evidence submitted during the examination of the application as
insufficient. The BOT Director cited a decision of the U.S. Trademark Trial and
Appeal Board which stated “we do not consider the declarations of approximately
12 of the Applicant’s distributors as representative of the ordinary saw blade
consumer.” 

The Director General also noted that Green Cross disclaimed the 3D shape of the
bottle in its existing trademark registration filed in 2017 and registered in
2021. Thus, Green Cross has not really shown long and continuous exclusive use
of its 3D mark. 

This decision of the IPOPHL Director General certainly gives rise to several
questions about the registrability of a 3D mark, e.g., what is the measure of
distinctiveness, is claiming secondary meaning a requirement for registrability
and whether the applicant has to submit a survey report done by an independent
service provider to show continuous exclusive use for five years prior to the
date of filing to prove secondary meaning. 



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ABOUT THE AUTHOR


EDITHA R. HECHANOVA



leads the HECHANOVA Group’s intellectual property law practice. The Hechanova
Group is made up of Hechanova & Co., Inc. an intellectual property consulting
firm handling trademark and patent prosecution, copyright, searches and other
non-contentious aspect of intellectual property, where she is President/CEO. The
contentious IP practice is handled by the other member firm, Hechanova Bugay
Vilchez & Andaya-Racadio, Lawyers which specialize in enforcement, litigation,
ADR, licensing corporate, immigration law and taxation. Editha graduated from
the University of the East with a business degree, major in Accounting, magna
cum laude, and is a Certified Public Accountant. She is currently the President
of the APP, an association of professionals who passed the patent agent
qualifying examination (PAQE).  




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