In the
Philippines there has been an important legislative change concerning the
maintenance of trademark rights. The change involves a new Declaration of
Actual Use (“DAU”), as established by the Intellectual Property Office of the
Philippines (IPO) in Circular No. 17-010 (2017 Trademark Regulation), in effect
since 1 August 2017.
It would
seem that this change derives from the need to adapt Philippine trademark
legislation in line with the provisions of the Madrid Protocol, although there
may also be other reasons such as a desire to restrict exclusive rights from
being obtained in defensive marks or perhaps even to introduce a new official
fee. However, our task here is not to analyse the reasons for the changes but
to explain them as simply as possible.
Up to now,
to preserve trademark rights in the Philippines it has been necessary to attest
to use by submitting a DAU and evidence of the use. Under the new Trademarks Act, it has been required to attest to use at different points in the lifetime of the mark:
- By the third anniversary of the filing date of the trademark application,
- Between the fifth and sixth anniversary of the date of registration of the mark, and
- Between the fifth and sixth anniversary of the date of renewal of the mark
The
requirement to submit the DAU affects Philippine national marks, international
marks designating the Philippines and subsequent designations of the
Philippines for international marks. If a mark has been protected through the
international registration system, while the term is also one year, it is
calculated from the date of renewal of the international mark.
Circular
No. 17-010 is certainly complex, as it appears to indicate that the requirement
to submit the new DAU will be applied with retroactive effect to marks that
have been renewed since 1 January 2017, and at the same time it appears to
state that this requirement must be met for all marks within one year from its
renewal date.
In
practice, for each trademark that is to be kept in force in the Philippines, a
DAU will have to be submitted within the established term of one year from the
renewal date and that same formality will have to be carried out again at each
10-year cycle during the lifetime of the registration.
In the more
immediate term, those owners of trademarks which were due for renewal from 1
January 2017 will have to satisfy the requirement of submitting the DAU before
the end of the one year term from the date on which the registration was set to
expire. Those owners that have renewed their marks in the course of 2017 and
wish to keep them in force, will have to keep in mind that they must comply
with this requirement within the time limit.
This
retroactive effect will not really exist in relation to international marks
because the Philippines acceded to the Madrid Protocol on 25 July 2012.
Therefore, the first international marks designating the Philippines will not
be due for renewal until 2022. In this regard, Article 14.5 of the Madrid
Protocol establishes that with respect to international registrations made
under the Protocol prior to the accession thereto of the State in question,
subsequent designations of protection in that State are not possible, and
therefore there would not be any subsequent designations of trademarks in the
Philippines that would be affected retroactively by this new requirement. In
the case of international marks, it is a change to bear in mind in the longer
term.
Visit our website: http://www.elzaburu.es/en
Author: Cristina Arroyo
Visit our website: http://www.elzaburu.es/en
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