In April, the Intellectual Property Office of the Philippines (IPOPHL) issued a series of office orders amending various trademark rules involving the Declaration of Actual Use (DAU) and (Paris) Convention priority applications.
Declaration of Actual Use
The requirement to file a third-year and a fifth-year DAU will also apply to international registrations designating the Philippines. For purposes of clarity, the DAUs must be filed within the following time frames: • Third-year DAU—within three years from the date of registration. • Fifth-year DAU—in the fifth year from the date of statement of grant of protection. Failure to file the DAU will cause the mark to be removed from the Trademarks Register, and the WIPO International Bureau will be notified accordingly.
Date of First Use
Information pertaining to the exact date of first use is not required for third-year DAUs. However, it is required for fifth-year DAUs. An incomplete DAU will result in the issuance of an office action giving the trademark owner a period of two months to submit the required information.
Proof of Online Use
For goods or services that are available by online purchase, the website may be indicated in the DAU form in lieu of the name or address of the establishment. Printouts of the downloaded pages shall be considered sufficient proof of actual use.
Actual use in connection with some of the goods and services in a particular class shall constitute use for the entire class. Further, actual use for one class shall be considered as use for the related classes.
Declaration of Non-Use
A Declaration of Non-use may be filed in lieu of the third-year DAU, but the trademark owner should clearly state the reasons prohibiting the actual use in Philippine commerce. The following are acceptable reasons for non-use of a mark: (a) use is prohibited by the government; (b) a restraining order or injunction was issued by the Bureau of Legal Affairs; or (c) the mark is the subject of an opposition or cancellation action.
Trademark Applications with Priority Claim
A certified true copy of the foreign application will no longer be required to substantiate a priority claim. Instead, the examiner is expected to verify the foreign filing based on the official website of the foreign IP office. Where such information is not available online, the applicant should, without need of notice, submit a photocopy of the foreign application together, if necessary, with an English translation.
Further, if the only remaining requirement is the submission of the foreign registration, the examiner may terminate examination and order the publication of the application in the eGazette. However, the actual publication of the mark will be held in abeyance until such time as the foreign registration is available. The trademark owner will have a period of six months from the issuance of the Notice of Allowance to submit a photocopy of the foreign registration, with a 12-month extension available.
The above amendments relax the formalities required by the previous rules and are a welcome development for trademark owners and practitioners alike.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.