Philippines: Abolishment of use requirement of renewal of a trade mark

Published on 18 Feb 2016 | 2 minute read

The trade mark renewal form was revised by the Philippine Intellectual Property Office in November 2015.

Before the revision of the renewal form, trade marks should be in use at the time of renewal because the renewal form contains a declaration that the mark is in use in commerce in the Philippines.  Proof of use, such as labels showing the mark, also need to be submitted with the renewal form.

The new form does not require: (1) a declaration that the mark is used or (2) proof of use of the mark:

 

Old form

    New form

Old form Petition further alleges that:

(a) The said mark above-identified in use in commerce in the Philippines on the goods recited in the registration, except that the used mark was discontinued on the following goods:      

(b) The right to the mark has been granted to the following:

 Class  Goods

(c) There is no material variation in the manner of display of the mark.

Enclosed herewith are five (5) labels showing the mark as customarily used.

Pursuant to the Trademark Regulations, the registrant confirms the following: 

(a) All goods or services listed in the above-identified certificate of registration are requested to be renewed. Yes      No       . (If no, please enumerate the goods, services for which the renewal is not requested. Attach additional sheet/s if necessary.)

(b) There is no material variation in the manner of the display of the mark. Yes        No       (if no, please enclose five (5) sets of the new labels)

 

This amendment is in line with the requirements for renewal of trade marks set out in the IP Code and the rules around its implementation. This is a significant change as it means that a mark may be renewed even if it is no longer in use at the time of renewal.

The caveat is that the trade mark owner should bear in mind the risk of third party cancellation actions that may be filed against marks that were not used for an uninterrupted period of three years.

In addition, 5 years after the trade mark is renewed, the trademark owner still needs to submit a fifth year anniversary Declaration of Actual Use, failing which the mark will be cancelled.   

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Managing Partner at Baranda & Associates, Principal and Country Manager of Philippines business
+63 2 403 1686
Principal
+62 21 769 7333
Managing Partner at Baranda & Associates, Principal and Country Manager of Philippines business
+63 2 403 1686
Principal
+62 21 769 7333