If you are an owner of a trademark registration in the Philippines, there are several maintenance requirements to look after in order to ensure that your registration is kept valid and enforceable. Ownership of trademarks in the Philippines not only depends on its successful registration before the Intellectual Property Office. This ownership, and its continued validity, depends on the owner’s ability to actually use the same in the Philippines.
Under Philippine trademark regulations, a statement of actual use of a trademark in the Philippines is shown through a Declaration of Actual Use or DAU. The Declaration of Actual Use or DAU is a sworn statement, duly signed by the trademark owner or a representative, and then notarized. The Declaration of Actual Use or DAU essentially contains statements to the effect that the trademark is actually being used in the Philippines, that it is being used for the goods and services identified, and that goods are being sold, or the services are being rendered, at a specific store or location in the Philippines or through a specific website.
The Different Types of DAUs
Originally, there were only two (2) Declarations of Actual Use or DAUs required to be filed under Philippine trademark regulations: (a) the 3rd year Declaration of Actual Use or the 3rd DAU, which must be filed within three (3) years from filing date of the trademark application; and (b) a 5th anniversary Declaration of Actual Use, also commonly referred to as the 5th anniversary DAU, which is required to be filed during the fifth anniversary of the registration of the mark.
Fairly recently, however, the Intellectual Property of the Philippines, through Memorandum Circular No. 17-010 or the Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers of 2017, added another Declaration of Actual Use or DAU requirement. The new requirement is the filing of a Declaration of Actual Use or DAU within one (1) year from date of renewal of the trademark registration and it is called a Renewal Declaration of Actual Use or a Renewal DAU. This is essentially uses the same DAU form recommended by the Intellectual Property Office but this time, the requirement to file the DAU comes from the fact of renewal of the trademark registration once the previous ten (10)-year term has expired.
The Deadlines to File the DAUs
Based on the previous discussion, there are essentially three deadlines to remember when looking after the maintenance of a trademark registration in the Philippines. As a summary, the deadlines to remember for filing a Declaration of Actual Use or DAU in the Philippines are the following:
- Within three (3) years from filing date of the trademark application (3rd year Declaration of Actual Use;
- During the 5th anniversary of the registration of the trademark (5th anniversary Declaration of Actual Use); and
- Within one (1) year from renewal of a trademark registration (Renewal Declaration of Actual Use)
Acceptable Proof of Actual Use
The filing of a Declaration of Actual Use or DAU should come with proof of actual use of the trademark in the Philippines. Under the latest regulations issued by the Intellectual Property Office on Declarations of Actual Use or DAUs, proof of actual use can be any of the following:
- Labels of the marks as actually used;
- Downloaded pages from registrant’s website clearly showing that the goods are being sold or the services are being rendered in the Philippines;
- Photographs of labels or goods bearing the marks as these are actually used;
- Brochures or advertising materials showing use of the mark in the Philippines;
- For online sale, receipts of sale of 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 or that the transaction took place in the Philippines; or
- Copies of contract for services showing the use of the mark.
Without the proof of actual use of the trademark in the Philippines, the Declaration of Actual Use or DAU will be treated as incomplete and the Intellectual Property Office will issue an office action requiring its submission. If no proof of actual use is submitted, the Declaration of Actual Use or DAU will not be given due course.
Extension of Time to File DAU
Trademark owners who are not yet ready to file the Declaration of Actual Use or DAU normally ask if there is a way to extend the deadlines. Under Philippine trademark regulations, only the 3rd year Declaration of Actual Use or DAU may be extended. The rules allow an extension of six (6) months within which to file the 3rd year Declaration of Actual Use or DAU upon filing of the necessary request and the payment of the required fees. It should be noted that the request for extension should be filed before the lapse of the original deadline to file the 3rd year Declaration of Actual Use or DAU.
As to the two other types of Declarations of Actual Use or DAUs, extension is not possible. Hence, the 5th anniversary Declaration of Actual Use or DAU and the Renewal Declaration of Actual Use or DAU should be filed when they become due, otherwise their non-filing will result in the removal of the registration from the registry.
Declaration of Non-Use
Under the Intellectual Property Code of the Philippines, non-use of a trademark is allowed in certain instances. Through the submission of a Declaration of Non-Use or DNU, the trademark registration will remain active. The submission of a Declaration of Non-Use or DNU is allowed under the following specific situations:
- 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
It should be noted that the submission of a Declaration of Non-Use or DNU is an exception to the rule and the grounds where its submission is allowed is limited to the ones mentioned above. No other grounds will be accepted by the Intellectual Property Office.
The Effect of Non-Filing of DAUs
Filing the Declaration of Actual Use or DAU, or the Declaration of Non-Use or DNU in certain instances, is a crucial maintenance requirement under Philippine trademark regulations. The non-filing of the DAUs when they become due will cause the rejection of the application, if the mark is still in the examination stage, or the removal of the mark from the trademark registry if it is already registered. Hence, it is highly important that the deadlines for the filing of Declarations of Actual Use or DAUs is noted and that the necessary documents are filed when they become due.
