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Amicus Curiae

Kurt Glen T. Yeung

How to maintain a trademark registration

Kurt Glen T. Yeung

May 25, 2018

To maintain a trademark registration with the Philippine Intellectual Property Office (IPOPHL), the registrant must use the mark in commerce and submit a Declaration of Actual Use. This is an affidavit that details information on the registered trademark and the goods and services it covers; the actual goods and services on which the mark is used; and where these goods and services can be bought within the country.

This declaration is submitted to the IPOPHL within three years from the filing date of the application, within one year from the 5th anniversary of the mark’s registration, and within one year from the expiration/renewal of the registration. It must also be supported by evidence showing use.

Examples of evidence to prove use are listed in the IPOPHL’s Trademark Regulations. These include labels of the mark, photographs of the goods bearing the trademark or of the establishment where services are rendered, advertising materials or brochures, and sales receipts or invoices. Online use is also allowed as IPOPHL accepts as supporting evidence downloaded pages from websites clearly showing that the goods are sold or the services are being rendered in the country.

One question regularly encountered is, must the owner show use for each of the listed goods and services? The answer is no. As long as the owner can show that the mark is used on at least one item in a particular class, then that is sufficient. So, in a multi-class registration, the owner must be able to prove use for at least one item per class. Classes that cannot be supported by evidence of use will be dropped from the registration.

Use must be within the country. For foreign owners of marks that cover services, the law appears to require them to have an establishment here. Otherwise, how would they be able to render service within the country?

But actual presence is not necessary according to the Supreme Court.

In W Land Holding v Starwood Hotels, the court recognizes the role of the Internet in advertising or promoting a brand. Here, the court agreed, to dismiss W Land’s petition for cancellation even if Starwood — whose trademark covers hotel and motel services — has no hotel in the country. Starwood though, runs a website where Filipinos can book reservations online, and this, according to the court, is enough to maintain the trademark registration.

But merely uploading the marks online together with their covered goods and services will not make the cut. According to the Supreme Court, online use, to be considered use in Philippine commerce, must result in an actual transaction. Or the posting is done to target consumers in a particular jurisdiction (in this case, the Philippines).

The intent to target consumers can be shown by the website having specific details about a particular jurisdiction.

For examples: the website may contain a local contact number; it may have a local version; it may be in a local language or has an option for switching into a local language; it may state whether domestic payment methods are available; or it may show prices in local currency.

If the mark is not used, a Declaration of Non-Use may be filed.

Unlike a declaration of use, a non-use declaration states the reasons why a trademark owner cannot use his mark. If the reasons are acceptable to the IPOPHL, the registration will be maintained despite the mark’s non-use.

For non-use to be excused, it must be because of something that is independent of the will of the trademark owner. The IPOPHL currently accepts the following excuses: if the mark cannot be used because of a requirement imposed by another agency that must be fulfilled first; if the mark cannot be used because of a restraining order or injunction; or if the mark cannot be used because it is subject of an opposition or cancellation case.