Trademark owners often find themselves confused (or worse, forget!) about the correct timings for filing the Affidavits of Use or Declarations of Actual Use in the Philippines.
I.Affidavits of Use under the Trademarks Law, Republic Act No. 166.
The Trademarks Law was enacted on 20 June 1947 under Republic Act No. 166. This is the earliest piece of legislation which provided for a means for the protection and registration of marks in the Philippines.
It stated as follows:
- Section 12. Duration.- Each certificate of registration shall remain in force for twenty years: Provided, That registrations under the provisions of this Act shall be cancelled by the Director, unless within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of registration, the registrant shall file in the Patent Office an affidavit showing that the mark or trade-name is still in use or showing that its non-use is due to special circumstances which excuse such non-use and is not due to any intention to abandon the same, and pay the required fee.The Director shall notify the registrant who files the above-prescribed affidavits of his acceptance or refusal thereof and, if a refusal, the reasons therefor.Thus, for marks whose registrations were granted under the Trademarks Law, the term of protection is 20 years. Currently, there are but a few marks existing under the said law. But, if you are one of the few still covered by the Trademarks Law, the Declaration of Actual Use has to be filed on the following periods:
- Fifth year Affidavit of Use – to be filed between the 5th year and the 6th year anniversaries from date of registration
- Tenth year Affidavit of Use – to be filed between the 10th year and the 11th year anniversaries from date of registration; and
- Fifteenth year Affidavit of Use – to be filed between the 15th year and the 16th year anniversaries from date of registration
Failure to file the Affidavit of Use within the reglementary period provided under the Trademarks Law will result to the automatic cancellation of the registration.
II. Declarations of Use under the Intellectual Property Code, Republic Act No. 8293
Then, the Intellectual Property Code of the Philippines came into force on 01 January 1998. The relevant provisions of the IP Code on Declarations of Actual Use (DAU) are:
Section 124.2. The applicant or the registration shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise the application shall be refused or the mark shall be removed from the Register by the Director.
Section 145. Duration. – A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shall file a declaration of actua use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by the Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Registry by the Office.
All marks filed under the IP Code are required to comply with the above compulsory provisions on DAU. Once again, failure to file the DAU within the prescribed period will result to the automatic Refusal or Removal of the mark from the Trademarks Registry.
You will note only two DAUs have to be filed under this new regime, namely:
- Third year DAU – to be filed at any time within Three (3) years from date of filing the application; and
- Fifth year DAU – to be filed within the 5th year and 6th year anniversaries from the date of registration
As a general rule, extension of time to file the DAU are not allowed except for the Third Year DAU where a one-time extension of six (6) months can be requested by the trademark owner.
The first information to identify is the law under which your trademark registration is issued. The types of DAU and the proper periods and/or window for filing the DAU depends on whether the registration was issued under the Trademarks Law or the Intellectual Property Code.
INTELLECTUAL PROPERTY CODE
The periods for filing the DAU are quite straight forward, as shown above. However, except for the Third Year DAU, all periods do not allow extensions of time for compliance. Hence, the last day for filing or the closing window for filing the DAU is usually the deadliest deadline.