13th Feb 2015
The Philippine Intellectual Property Office (“IPO”) does not require proof of use in commerce in the processing of trademark applications. However, during the life of the trademark, the applicant or registrant must prove that it is using the mark in the Philippines. Thus, a notarized Declaration of Actual Use (“DAU”) together with proofs and specimens of use must be filed within the periods specified below. A DAU is a document filed by the applicant or registrant with the IPO showing that the mark applied for is actually and presently being used in the Philippines on its goods and/or services, specifying the particular Philippine outlets where the goods and/or services are being sold and/or rendered. A DAU is used to show the IPO that the mark is continuously used in commerce. It is the IPO’s intention to issue the registration certificate to cover only those particular goods and services on which the mark is in actual use in the Philippines as disclosed in the DAU. It is pertinent to note that failure to submit the DAU and the corresponding specimens of use will result in the automatic refusal of the application or removal of the mark from the Register.
Requirements for DAU in Trademarks:
1. A duly notarized DAU containing the following information:
a. Name, citizenship, official title and address of the applicant, registrant or authorized officer of the corporation-applicant/registrant; and
b. Name and address of the outlet or outlets where the goods are sold (an outlet is the place or establishment where the goods are sold or offered for sale, which may include websites through which the goods covered by the mark can be bought by customers in the Philippines, or which may contain contact information that would allow costumers in the Philippines to order or inquire about the goods)
2. Five documents evidencing proof of use visibly and legibly showing the mark.
Proof of Use
The following shall be accepted by the IPO as proof of use:
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 marks as these are actually used or of the stamped or marked container of goods and of the establishments 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; and
6. Copies of contracts for services showing the use of the mark; and
7. Other evidences of use.
It must be emphasized that computer printouts of the drawing or reproduction of marks will not be accepted as evidence of use.
Period in Filing the DAU for a new trademark
The DAU is filed twice namely:
1. Within three (3) years from the filing date of the application; and
2. Within one (1) year from the fifth (5th) anniversary of the mark’s registration.
Period in Filing the DAU for a renewed trademark
The DAU is filed twice namely:
1. Within one (1) year from the date of renewal; and
2. Within one (1) year from the fifth (5th) anniversary of each renewal.
Effect of Failure to File the DAU
Failure to file the DAU and proof of use will cause the automatic removal of the trademark from the registry. Hence, the application or registration cannot be revived. The remedy is the refiling of a new trademark application.
Extension of Time to File the 3rd Year DAU
A single extension of six (6) months to file the 3rd year DAU and proof of use may be granted by the IPO provided that the request for extension is filed before the deadline to file the 3rd DAU and payment of government fees.
No Extension of Time to File the 5th Year DAU and Renewal DAU
NO extension of time is allowed for the filing of the 5th year DAU and Renewal DAU.
This is how to maintain your trademark registration in the Philippines.
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