If you own a trademark registration in the Philippines, you must follow several maintenance requirements to ensure that your registration remains valid and enforceable. In the Philippines, trademark ownership is contingent not only on successful registration with the Intellectual Property Office. This ownership, as well as its continued validity, is contingent on the owner’s ability to use the same in the Philippines.
A Declaration of Actual Use, or DAU, is required by Philippine trademark regulations to demonstrate a statement of actual use of a trademark in the Philippines. The Declaration of Actual Use, or DAU, is a sworn statement signed and notarized by the trademark owner or a representative. The Declaration of Actual Use, or DAU, essentially states that the trademark is being used in the Philippines, that it is being used for the goods and services identified, and that the goods or services are being sold or rendered at a specific store or location in the Philippines or through a specific website.
The Different Types of DAUs
Originally, there were only two (2) Declarations of Actual Use or DAUs required to be filed under Philippine trademark regulations:
- the 3rd year Declaration of Actual Use or the 3rd DAU, which must be filed within three (3) years from the filing date of the trademark application; and
- A 5th anniversary Declaration of Actual Use, also commonly referred to as the 5th anniversary DAU, which is required to be filed during the fifth anniversary of the registration of the mark.
However, the Intellectual Property of the Philippines recently added another Declaration of Actual Use or DAU requirement in Memorandum Circular No. 17-010 or the Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers of 2017. The new requirement is to file a Declaration of Actual Use, or DAU, within one (1) year of the date of renewal of the trademark registration. This is known as a Renewal Declaration of Actual Use or Renewal DAU. This is essentially the same DAU form recommended by the Intellectual Property Office, but the requirement to file the DAU stems from the fact that the trademark registration is being renewed after the previous ten (10)-year term has expired.
The Deadlines to File the DAUs
Based on the preceding discussion, there are essentially three deadlines to keep in mind when it comes to maintaining a trademark registration in the Philippines. In summary, the following are the deadlines to remember when filing a Declaration of Actual Use or DAU in the Philippines:
- Within three (3) years from filing date of the trademark application (3rd year Declaration of Actual Use;
- During the 5th anniversary of the registration of the trademark (5th anniversary Declaration of Actual Use); and
- Within one (1) year from renewal of trademark registration (Renewal Declaration of Actual Use)
Acceptable Proof of Actual Use
The filing of a Declaration of Actual Use, or DAU, must be accompanied by evidence of actual use of the trademark in the Philippines. According to the most recent Intellectual Property Office regulations on Declarations of Actual Use, or DAUs, proof of actual use can be any of the following:
- Labels of the marks as actually used;
- Downloaded pages from registrant’s website clearly showing that the goods are being sold or the services are being rendered in the Philippines;
- Photographs of labels or goods bearing the marks as these are actually used;
- Brochures or advertising materials showing the use of the mark in the Philippines;
- For online sale, receipts of sale of 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 or that the transaction took place in the Philippines; or
- Copies of contract for services showing the use of the mark.
The Declaration of Actual Use, or DAU, will be considered incomplete if it lacks proof of actual use of the trademark in the Philippines, and the Intellectual Property Office will issue an office action requiring its submission. If no proof of actual use is provided, the Declaration of Actual Use, or DAU, will be delayed.
Extension of Time to File DAU
Trademark owners, who are not yet ready to file the Declaration of Actual Use, or DAU, usually ask if the deadlines can be extended. Only the third year of the Declaration of Actual Use, or DAU, may be extended under Philippine trademark regulations. The rules allow for a six-month extension to file the third-year Declaration of Actual Use, or DAU, upon filing the necessary request and payment of the required fees. It should be noted that the request for an extension must be submitted before the original deadline for filing the third-year Declaration of Actual Use, or DAU expires.
The Extension is not possible for the two other types of Declarations of Actual Use, or DAUs. As a result, the 5th anniversary Declaration of Actual Use or DAU and the Renewal Declaration of Actual Use or DAU must be filed when they become due, or the registration will be removed from the registry.
Declaration of Non-Use
Non-use of a trademark is permitted in certain circumstances under the Philippine Intellectual Property Code. The trademark registration will remain active if a Declaration of Non-Use, or DNU, is submitted. The submission of a Declaration of Non-Use, or DNU, is permitted in the following circumstances:
- Where the applicant or registrant is prohibited from using the mark in commerce because of a requirement imposed by another government agency before putting the goods in the market or rendering of the services;
- Where a restraining order or an injunction was issued by the Bureau of Legal Affairs, the courts or quasi-judicial bodies prohibit the use of the mark; or
- Where the mark is the subject of an opposition or cancellation case.
It should be noted that the submission of a Declaration of Non-Use, or DNU, is an exception to the rule, and the grounds for which it is permitted are limited to the ones listed above. The Intellectual Property Office will not accept any other grounds.
The Effect of Non-Filing of DAUs
Filing the Declaration of Actual Use, or DAU, or, in some cases, the Declaration of Non-Use, is a critical maintenance requirement under Philippine trademark regulations. If the DAUs are not filed when they are due, the application will be rejected if the mark is still in the examination stage or the mark will be removed from the trademark registry if it is already registered. As a result, it is critical that the deadlines for filing Declarations of Actual Use, or DAUs, are noted and that the necessary documents are filed when they become due.