A significant legislative development has taken place in the Philippines regarding the maintenance of trademark rights. The change consists of a requirement for a new Declaration of Current Use (hereinafter “DAU”) in this jurisdiction. The
Intellectual Property Office of the Philippines (IPO) has established this requirement in Circular No. 17-010 (Trademark Regulations of 2017), effective as of August 1, 2017.
Apparently, the change stems from the need to bring Philippine trademark legislation into line with the provisions of the Madrid Protocol, although there may also be other reasons aimed at restricting the exclusive registration of umbrella trademarks or even the imposition of a new fee. It is not our purpose here to analyze the reasons behind this development, but rather to explain as simply as possible what these changes entail.
Until now, to maintain trademark rights in the Philippines, it was necessary to prove use by filing a Declaration of Use (DAU) and providing evidence of such use. Under the new Trademark Law, proof of use will be required at different stages of the trademark’s life cycle:
- On the third anniversary of the date the trademark application was filed,
- Between the fifth and sixth anniversaries of the trademark's registration date and
- Between the fifth and sixth anniversaries of the brand's relaunch.
Circular No. 17-010 introduces an additional DAU, in addition to those already required by current legislation, which must be filed within one year of the trademark’s expiration date.
The requirement to file the DAU would apply to both Philippine national trademarks and international registrations designating the Philippines, as well as subsequent designations of international registrations in this country. When a trademark has been protected through the international registration system, although the deadline is also one year, it will be calculated from the date of renewal of the international trademark.
Circular No. 17-010 is truly convoluted, as it appears to indicate that the requirement for the new DAU will apply retroactively to trademarks that were renewed on or after January 1, 2017, and at the same time seems to suggest that all trademarks must comply with this requirement within one year of their expiration date.
In practice, for any trademark to be maintained in the Philippines, a DAU must be filed within the established one-year period following its expiration date, and this requirement must be repeated at the end of each 10-year registration term.
In the near future, trademark owners whose trademarks were set to expire on or after January 1, 2017, must comply with the requirement to file a DAU before the end of the one-year period following the expiration date. Trademark owners who renewed their trademarks during 2017 and wish to maintain them should be aware that they must comply with this requirement.
With regard to international trademarks, such retroactivity would not actually apply because the Philippines acceded to the Protocol on July 25, 2012. It will not be until 2022 that the first international trademarks designating this jurisdiction will need to be renewed. In this regard, Article 14(5) of the Madrid Protocol establishes that, with respect to international registrations made under the Protocol prior to the date of accession of the Contracting Party in question, subsequent designation is not permitted; consequently, there would be no subsequent designations of international trademarks in the Philippines that would be retroactively affected by this change. In the case of international trademarks, this is a development to keep in mind for the more distant future.
Author: Cristina Arroyo