What is the duration of a trademark registration in the Philippines?
A trademark or service mark registration is valid for ten (10) years.
What is required to maintain a trademark registration?
After the registration of a trademark, the registrant is required to file a Declaration of Actual Use with proof of such use within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Trademark Register by the IPO.
What are the instances where non-use of a trademark is excused?
Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. The Intellectual Property Office, under Office Order No. 13-056, Series of 2013, declared that in the following cases, a Declaration of Non-Use may be filed within three years from filing of the application, or in lieu of the 5th anniversary Declaration of Actual Use:
(1) 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;
(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 the subject of an opposition or cancellation case.
What proof of actual use of a trademark is acceptable to the Intellectual Property Office of the Philippines?
The Intellectual Property Office declared that the following shall be accepted as proof of actual use of a mark in the Philippines:
(1) labels of the mark as these are used;
(2) downloaded pages from the website of the applicant or registrant 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 of the establishment is 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) for online sale, receipts 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 or that the transaction took place in the Philippines;
(6) copies of contracts for services showing the use of the mark.
Are trademark registrations in the Philippines renewable?
Yes. A trademark or service mark registration may be renewed for periods of ten (10) years after the expiration of the original ten-year term, upon payment of the prescribed fee and upon filing of a petition for renewal of registration.
When must the petition for renewal of the trademark registration be filed?
The renewal must be filed within six (6) months before the expiration of the term of the trademark registration or within the six (6) months grace period after its expiration, albeit for an additional fee.