Consider trademark protection to be akin to how the human brain works when learning new skills or knowledge.
The more a person uses and practices a skill or knowledge, the more likely it will be retained in his brain’s functions over time, particularly as he ages.
Protection for a registered trademark works in the same way; a trademark grants its owner specific rights, but in order to maintain those rights, the trademark must be used.
A trademark holder has the exclusive right to use his mark and to prevent others from using the same or similar marks on identical or related goods or services.
He loses those rights and his trademark is removed from the Intellectual Property Office of the Philippines (IPOPHL) Register if he fails to maintain his trademark, that is, file a Declaration of Actual Use.
Intellectual property, according to the Intellectual Property Office of the Philippines’ Bureau of Trademarks, is a tool for facilitating trade and investment.
By requiring DAU, the IPOPHL is filtering trademark-owners who simply stockpile marks without actually using them, and maybe reducing financial gain from owners of identical/confusingly similar trademarks.
The DAU requirement then serves as a deterrent to ‘trademark squatting,’ which occurs when a party registers a trademark in bad faith. When a party registers another’s a trademark as his own in a jurisdiction where the original trademark owner has yet to register, this occurs.
This is problematic in countries where the trademark system is ‘first-to-file,’ as the ‘squatter’ effectively blocks the registration of the original brand-owner, and may extract benefits from him just so he can register.
Furthermore, in the interest of competition, the removal of marks due to noncompliance with DAU will make the same marks available to other potential trademark registrants.
Trademark registration is valid for ten years, but to keep it, the DECLARATION OF ACTUAL USE of the mark, along with supporting evidence of use, must be filed with the Intellectual Property Office of the Philippines according to the schedule below:
- DAU filed within three (3) years from the filing date of the trademark application;
- DAU filed within one (1) year from the fifth anniversary of the registration / within one (1) year from the fifth anniversary of the renewal of registration; and
- DAU to be filed within one (1) year from the date of renewal of registration (*This additional requirement applies to all marks due for renewal on 1 January 2017 and onwards, regardless of the filing date of the request for renewal).
A single six-month extension can be requested to file for the 3rd Year DAU, provided the request is made before the three-year period expires and the necessary fees are paid.
However, if a registrant has valid reasons that prevent him from using the mark, he may file a Declaration of Non-Use instead of the DAUs. However, failure to use a mark may be excused only in the following circumstances:
- the registered owner is prevented from using it as a requirement imposed by another government agency,
- an existing restraining order or injunction issued by a court, the IPO, or other quasi-judicial bodies prevents the use or,
The mark is the subject of an opposition or cancellation case.