What is use requirement after trademark registration in Philippines? What actions could be considered as use of trademark in Philippines? Could we stop validity of trademark registration certificate based on non-use for a period of time? How many years of non-use?
The trademark is required to be used in Philippines and it must be used within three years from the registration date. The use of trademark must be on commercial scale.
If there is no use on the Philippines for a consecutive period of 3 years, then there is a risk of the mark being cancelled if a party files a Petition for Cancellation based on non-use.
Please not that sales to Filipino buyers through online purchases is a valid evidence of use. Thus, if the client has sold its product online to the Philippines, then that can be submitted as evidence of use together with the Declaration of Actual use.
Regarding the statement in Philippines, under our rules, a 3rd year Declaration of Actual Use must be filed in order to maintain the registration. The only time a Declaration of Non-Use may be accepted instead of the 3rd Year Declaration of Actual Use is in the following situations:
Applicant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of services;
Where there is a restraining order to putting the goods in the market or rendering of services;
Where the mark is subject of an opposition or cancellation case.
If we do not use the trademark in Philippines, so must be give any declaration of the trademark not use or don’t need?
Regarding the statement in Philippines, under our rules, a 3rd year Declaration of Actual Use must be filed in order to maintain the registration. The only time a Declaration of Non-Use may be accepted instead of the 3rd Year Declaration of Actual Use is in the following situations:
Applicant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of services;
Where there is a restraining order to putting the goods in the market or rendering of services;
Where the mark is subject of an opposition or cancellation case.
If the situation of the client is none of the instances mentioned, and the client still does not use the mark in the Philippines, then the only recourse is to re-file the trademark application after it is removed from the register for non-use.
However, please not that sales to Filipino buyers through online purchases is a valid evidence of use. Thus, if the client has sold its product online to the Philippines, then that can be submitted as evidence of use together with the Declaration of Actual use.
What is required documents for renewal trademark in PHILIPPINES? Is grace period after renewal date allowed?
The grace period is 06 months from the expire date of the trademark registration. The power of attorney is required for renewing a trademark in Philippines.