Declaration of actual use
Declaration of non-use
Ensuring further protection
The process of obtaining trademark registration is only the beginning. To ensure continued validity and protection, a trademark owner must use the registered mark in the Philippines and comply with other regulatory filings.
Under existing regulations, a trademark owner is required to file a declaration of actual use:
- within three years of filing the application; and
- within one year of the fifth anniversary of the registration date.
The declaration of actual use is a sworn statement from a representative of the trademark owner certifying use of the trademark in the Philippines.
In order to evidence use in the Philippines, the declaration of actual use must contain information on where the goods or services are available, as well as photographs, labels or other physical manifestations of use in the country. A complication arises for marks used on goods or services that are available for purchase online only. For such goods or services, the registered owner must present printouts of the web pages that specifically show that the goods or services are available in the Philippines. The mere submission of a declaration of actual use does not complete the process. The Intellectual Property Office (IPO) must review the contents of the declaration of actual use and confirm its sufficiency. The IPO will issue a notice of acceptance certifying that the declaration is consistent with regulations, thereby confirming the continued effectivness of the registration. If the declaration of actual use is unacceptable to the IPO, the registration will be cancelled.
Under certain circumstances, a registered owner can submit a declaration of non-use instead. However, a valid reason must be provided to excuse non-use, such as:
- a restriction on use imposed by a government agency;
- a pending opposition or cancellation action; or
- an injunction or restraining order prohibiting the use of the mark.
Assuming that the registration remains valid and effective throughout the 10-year period, the next step is filing a renewal petition. This can be done six months before the expiration of the registration period or within six months subsequent to expiration (with the payment of additional fees).
Aside from the declaration of actual use and renewal petition – which ensure the continued effectivness of the registration – a trademark owner has other methods to strengthen its ownership. The most basic step that should be taken by the registered owner (by itself or through its counsel) is to consistently review the IPO's e-Gazette, which contains pending trademark applications published for opposition. This way, any trademark application that will potentially cause damage to the existing registration can be opposed. Further, by monitoring the issued registrations, the registrant can initiate cancellation proceedings against any registration that can similarly cause it damage.
Aside from this, cooperation with the Bureau of Customs is helpful. By engaging the bureau, the registered owner can take full advantage of its border control functions to hold shipments entering Philippine ports that are suspected of containing counterfeit goods. Under certain circumstances, seizure proceedings can also be initiated.
In order for the bureau to act accordingly, the registered owner must seek recordal of its products, with its corresponding intellectual property, at the bureau's registry. By doing so, the bureau's examiners and assessment officers are given the authority to conduct searches and seizures, even without further consultation with the registered owner.
In other instances, registered owners have also engaged the assistance of reputable private investigators to assist in determining whether any counterfeit goods are being manufactured, distributed, imported or sold in the Philippines.
For further information on this topic please contact Lee Benjamin Z Lerma at Romulo Mabanta Buenaventura Sayoc & De Los Angeles by telephone (+63 2 848 0114) or email ([email protected]). The Romulo Mabanta Buenaventura Sayoc & De Los Angeles website can be accessed at www.romulo.com.