The Philippine Intellectual Property Office (IPO) recently issued Memorandum Circular No. 17-010 or the Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers of 2017. The said issuance took effect on 1 August 2017.
The filing of the Declaration of Actual Use (DAU) is a specific requirement under the Intellectual Property Code of the Philippines for the registration and maintenance of a mark. One of the most significant revisions in the IPO memorandum is the requirement to file an additional DAU in addition to the 3rd year and 5th year DAUs. Thus, there are now three (3) types of DAUs required to be filed:
- DAU to be filed within three (3) years from the filing date of the trademark application;
- DAU to be 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).
If the applicant/registrant has valid reasons which prevent it from using the mark in commerce, such as a requirement imposed by another government agency, existing restraining order or injunction issued by a court, the IPO or other quasi-judicial bodies, or the mark is the subject of an opposition or cancellation case, a Declaration of Non-Use may be filed in lieu of any of the DAUs mentioned above, with proof of reasons beyond the control of the applicant/ registrant.
Note that the IPO may issue notices or reminders to applicants/registrants regarding the filing of the DAUs. However, the absence of such notices cannot be used as an excuse from filing the DAUs within the prescribed periods.