How to maintain a registered trademark in the Philippines
Imagine trademark protection as a similar process to how the human brain works in adopting new skills or knowledge.
The more a person uses and practices a skill or knowledge , the likelier it will be retained in his brain’s functions over time, especially as a person ages.
Protection for a registered trademark works in the same vein; A trademark gives its owner particular rights but to keep enjoying those rights, the trademark has to keep being used.
A business owner with a trademark has the exclusive right to make use of his mark, and prevent others from using the same or similar marks, on identical or related goods or services.
If the he fails to maintain his trademark, that is, file a Declaration Of Actual Use , he loses those rights, and his trademark is removed from the Intellectual Property Office of the Philippines (IPOPHL) Register.
According to the Intellectual Property Office of the Philippines’ Bureau of Trademarks, intellectual property is a tool to facilitate trade and investment.
In requiring DAU, the IPOPHL is filtering trademark-owners who just stockpile marks without genuinely using them, and may just be cutting in the financial gain from owners of identical/confusingly similar trademarks.
The DAU requirement, then works as tool to deter the ‘trademark squatting’ - when a party registers a trademark in bad faith. This occurs when a party registers another’s trademark as his own in a jurisdiction where the original trademark owner has yet to register.
In countries where the trademark system is ‘first-to-file’, this is problematic as the the ‘squatter’ essentially blocks the registration of the original brand-owner, and may extract benefits from him just so he can register.
Additionally, in the name of competition, removal of marks because of non-compliance with DAU will free up the same marks to other potential trademark registrants.
A trademark registration is in force for 10 years but, to maintain it, the DECLARATION OF ACTUAL USE of the mark, with accompanying evidence of its use, must be filed with the Intellectual Property Office of the Philippines according to the following schedule:
- DAU filed within three (3) years from the filing date of the trademark application;
- DAU filed within one (1) year from the fifth anniversary of the registration / within one (1) year from the fifth anniversary of the renewal of registration; and
- DAU to be filed within one (1) year from the date of renewal of registration (*This additional requirement applies to all marks due for renewal on 1 January 2017 and onwards, regardless of the filing date of the request for renewal).
A single extension of six months can be requested to file for the 3rd Year DAU, provided the request was made before the three-year period expired, and upon payment of the necessary fees.
But, if a registrant has valid reasons which prohibit him from using the mark, a Declaration of Non-Use may be filed instead of the DAUs. However, the non-use of a mark may only be excused in the following circumstances:
- the registered owner is prevented from using it as a requirement imposed by another government agency
- an existing restraining order or injunction issued by a court, the IPO or other quasi-judicial bodies prevents the use or,
- the mark is the subject of an opposition or cancellation case