A declaration of actual use of a mark is a critical requirement for the perfection and maintenance of a trademark registration in the Philippines. Consistent with our commitment to provide comprehensive and practical solutions in every aspect of trademark protection, we assist our clients not only in ensuring the timely filing of use declarations but also in securing evidence to establish trademark use in the Philippines through local and online market inspections. This approach has helped our clients avoid costs associated with refilings due to lapsed applications and registrations. For urgent assistance in securing evidence of use, send an email to TMUSE@bccslaw.com.
Under the Intellectual Property Code of the Philippines (IP Code) which came into force on 1 January 1998, the duration of a trademark registration is ten (10) years. In order to maintain the trademark registration, a declaration of actual use (DAU) of the mark together with evidence of use of the mark must be filed with the Intellectual Property Office (IPO) within the prescribed periods, as follows:
(b) within one (1) year from the 5th anniversary of the registration of the mark (5th Year DAU*);and
(c) within one (1) year from the date of renewal
A single extension of six (6) months may be requested to file the 3rd Year DAU. However, an extension of the period to file the 5th Year DAU is not possible. Failure to file the DAU within the prescribed periods will result in the refusal of the application or the removal of the mark from the registry by operation of law.
Prior to the effectivity of the IP Code, the governing law on trademark registration was Republic Act No. 166 (RA 166). Trademarks registered under RA 166 are granted for a term of twenty (20) years. In order to maintain the trademark registration, a DAU of the mark with evidence to that effect must be filed within the prescribed periods, as follows:
(a) within one (1) year from the 5th anniversary of registration of the mark (5th Year DAU);
(b) within one (1) year from the 10th anniversary of registration of the mark (10th Year DAU); and
(c) within one (1) year from the 15th anniversary of registration of the mark (15th Year DAU).
For instance, if a trademark was registered on 1 January 1995, the corresponding DAU deadlines are as follows:
(a) 5th Year DAU - between the period from 2 January 2000 to 1 January 2001
(b) 10th Year DAU - between the period from 2 January 2005 to 1 January 2006
(c) 15th Year DAU - between the period from 2 January 2010 to 1 January 2011
The deadlines to file the foregoing DAUs are not extendible. Failure to file the DAU within the prescribed periods will result in the removal of the mark from the registry by operation of law.
IPO Regulations permit the submission of a scanned copy of the notarized DAU and specimens of use within the prescribed period, provided that
(a) filing fees are paid within the prescribed period; and
(b) the original DAU is submitted within thirty (30) days from filing of the scanned DAU.
Declaration of Non-Use
If the registrant is not able to comply with the DAU requirement on account of the non-use of the mark, the IP Code permits the filing of a Declaration of Non-Use (“DNU”) of the mark to keep the registration active. The DNU may be filed under the following circumstances:
Where the applicant or registrant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of the services;
Where a restraining order or an injunction was issued by the Bureau of Legal Affairs, the courts or quasi-judicial bodies prohibiting the use of the mark; or
Where the mark is the subject of an opposition or cancellation case.
Failure to file the DAU or DNU, as the case may be, within the prescribed periods will result in the removal of the mark from the registry by operation of law.
DAU/DNU Form and Specimens of Use
Every DAU must be in the format prescribed by the IPO and contain the following information:
(a) names and addresses of establishments in the Philippines where the goods or services bearing the mark are sold or distributed, or rendered, as the case may be, or the web address of local or foreign online establishments where goods or services bearing the mark are made available for sale or provision to customers in the Philippines
(b) list of goods or services on which the mark is actually used.
Labels or pictures of the products (for the goods), or letterheads or brochures (for the services) depicting the mark as actually used in the Philippines must be submitted together with the DAU.
The DAU/DNU must be signed by an authorized officer of the trademark applicant/registrant-entity and notarized. The DAU need not be legalized/consularized/authenticated. The DAU/DNU may also be signed by the attorney or authorized representative of the trademark owner as long as he or she has personal knowledge that the goods or services are in fact sold or rendered in the Philippines.
Copyright 2014. All rights reserved.