The Republic of the Philippines is one of the most dynamically developing countries of the Asian region and a favorable place for doing business. After adoption of the Law on Foreign Investments by the Philippines` authorities, the foreign citizens have been entitled to invest in any business areas, except, perhaps, some specific ones reserved for the citizens of the Philippines by the Constitution of the country.
The Philippines is a member of the Madrid system
As the Philippines is a member of the Madrid system, there are two variants of registration of a mark for goods and services in this state:
- through the use of the procedure stipulated in Madrid Protocol (international registration of a trademark under Madrid system);
- by direct filing of trademark application to the Patent Office of this country (national registration of a trademark).
We have already introduced you to the international procedure of trademark registration under the Madrid system in our previous publications. This article is devoted to several peculiarities of keeping a mark for goods and services valid in the Philippines.
Upon filing a trademark application, the Bureau of Trademarks of the Intellectual Property Office of the Philippines does not require any proof of use of a trademark in commerce. But after the expiration of a particular time the applicants or registrants, both under national and international procedures, are obliged to file a Declaration of Actual Use of the mark with evidence to that effect and upon payment of the prescribed fee:
– within three (3) years from the filing date of the application;
– within one (1) year from the fifth anniversary of the registration;
– within one (1) year from date of renewal;
– within one (1) year from the fifth anniversary of each renewal (that is 15 years, 25 years, 35 years gone, etc.).
The declaration must refer to only one application or registration, and the following shall be accepted as proof of actual use of the mark:
– downloaded pages from the website clearly showing that the goods are being sold or the services are being rendered in the Philippines;
– photographs of goods bearing marks as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;
– any advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
– financial statements: 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;
– copies of contracts for services showing the use of the mark.
It is worth paying attention that the Director of the Bureau of Trademarks may, from time to time, issue a list of acceptable evidence of use and those that will not be accepted by the Office. That is why, it is very important to watch out for updated information and any developments.
In case of failure to provide a Declaration of Actual Use, the application shall be refused in registration or the registered mark shall be removed from the Register by the Director of the Bureau of Trademarks.
In order to avoid such consequences in case when a mark is not actually used, it is necessary to file a Declaration of Non-Use indicating the grounds and justification therefor. The non-use of a mark may be excused if caused by circumstances independently of the will of its owner.
Author: Viktoriia Germasheva
Reprinting, full or partial copying of the text of this article, its translation, posting of the article or its translations at other Web-sites or other Internet-resources, any other use of the article without written consent of the author are strictly prohibited. The violation is punishable in accordance with the Law of Ukraine «On Copyright and Related Rights”.