The Philippine requirement of submitting a Declaration of Actual Use to maintain a trademark registration
A trademark registration must be maintained by filing Declarations of Actual Use on certain periods. The trademark owner’s work does not end with securing the certificate of trademark registration. Although the validity of registration lasts for ten years, it is still dependent on the owner’s compliance with the maintenance requirements mandated by the Philippine IP Code and the implementing rules and regulations.
Our laws require that the mark must be used in the Philippines in order to maintain the registration. To prove that the mark was used, owners are required to file Declarations of Actual Use together with the evidence of use on the following periods:
1. Within three (3) years from the filing date of the application;
2. Within one (1) year from the fifth anniversary of the registration;
3. Within one (1) year from the date of renewal; and
4. Within one (1) year from the fifth anniversary of each renewal.
For trademarks filed and registered through the Madrid System, holders should also comply with the requirements of submitting a Declaration of Actual Use with the Philippine Intellectual Property Office within the following periods:
1. Within three (3) years from the date of international registration or the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate;
2. Within one (1) year from the fifth anniversary of the date of the statement of grant of protection;
3. Within one (1) year from the date of renewal of the registration of the mark; and
4. Within one (1) year from the fifth anniversary of the date of renewal of registration or the mark.
Failure to file the Declaration of Actual Use shall cause the removal of the mark from the register.
The evidence of actual use which must be submitted together with the Declaration of Actual Use may be any or combination of the following:
1. Labels of the mark as these are used;
2. Downloaded pages from the website clearly showing that the goods are being sold or the services are being rendered in the Philippines;
3. Photographs (including digital photographs printed on ordinary paper) of goods bearing the marks as these are actually used or of the stamped or marked container of goods and the establishment/s where the services are being rendered;
4. Brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
5. Receipts or invoices of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines;
6. Copies of contracts for services showing the use of the mark.
A Declaration of Actual use form is available at https://www.poncelaw.com.ph/wp-content/uploads/2018/05/Declaration-of-Actual-Use.pdf.
Should the owner or holder of the mark require additional time to file the Declaration of Actual Use, a single request for extension is allowed only for the Declaration of Actual Use required within three (3) years from the filing date of the application or the international registration date. This will give the owner or holder of the mark an additional period of six (6) months to submit the Declaration of Actual Use (3rd Year).
In certain circumstances, a Declaration of Non-Use may be filed and is permissible. A Declaration of Non-Use may be executed in the following cases:
1. where the applicant/registrant is prohibited from using the mark in commerce because of a requirement imposed by another government agency of the Philippines prior to putting the goods in the market or rendering of services;
2. where a restraining order or injunction was issued by the Bureau of Legal Affairs, the courts, or quasi-judicial bodies prohibiting the use of the mark; or
3. where the mark is subject of an opposition or cancellation case.
The period to file the Declaration of Non-Use are as follows:
1. Within three (3) years from the filing date of the application or date of international registration for those filed through the Madrid System. However, a six (6) month extension period may be granted upon the request of the applicant or registrant made prior to the expiration of the three-year period, and the required fee is paid.
2. Within the prescribed periods earlier mentioned when the use of the mark has been interrupted or discontinued by pending litigation.
Except for non-use caused by pending litigation, non-use of a mark shall not be allowed for a total of more than six (6) years. For this purpose, actual use must commence and DAU filed within one (1) year from the 5th anniversary of the registration or grant of protection, otherwise, the mark will be removed from the register.
Should you have questions and clarifications, you may email us at mail@poncelaw.com.ph .