The Philippines Trademark Update
The Intellectual Property Office of the Philippines (IPOPHL) recently issued Memorandum Circular No. 17-010 dated July 07, 2017amending the Implementing Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017. In particular:
“RULE 204. Period to File Declaration of Actual Use. – The Office will not require any proof of use in commerce upon filing of an application. All applicants or registrants shall file a Declaration of Actual Use (DAU) of the mark with evidence to that effect and upon payment of the prescribed fee on the following periods:
(a) Within three (3) years from the filing date of the application;
(b) Within one (1) year from the fifth anniversary of the registration;
(c) Within one (1) year from date of renewal;
(d) Within one (1) year from the fifth anniversary of each renewal;
otherwise, the application shall be refused registration or the registered mark shall be removed from the Register by the Director.”
“RULE 206. Renewal DAU. – For registered marks due for renewal on January 01, 2017 onwards, regardless of the filing date of the Request for Renewal, submission of Declaration of Actual Use (DAU) referred to in Rule 204 (c) is required for purposes of registration maintenance.”
Under the aforementioned Rules, the registrant is required to submit a Declaration of Actual Use (“DAU”) within 1 year from the date of renewal, regardless of the filing date of Request for Renewal. For example, the expiration of the term of the registration of the mark is on September 1, 2017, the Declaration of Actual Use must be filed on or before September 1, 2018. The DAU form must be signed and notarized.
Also in a separate Memorandum Circular dated June 28, 2017, the Intellectual Property Office has decided to impose an official fee of US$13 for the following transactions with the Intellectual Property Office: (1) recordal of change of local agent or representative, (2) recordal of change of address or change in address or contact information of local agent or representative, (3) substitution of attorney or local agent or representative. Prior to this new Memo Circular, these transactions did not impose any official fees. This new official fees will be effective on 28 June 2017.