Question & AnswerQ&A (IPO OFFICE ORDER NO. 13-056)
The IPOPHL aims to streamline administrative procedures in registering trademarks to ensure timely processing and clarify what constitutes proof of actual use.
Applicants or registrants must file a declaration of actual use with evidence within three years from the filing date of the trademark application without needing any notice from the Office.
The trademark application shall be refused registration or the registered mark shall be removed from the register by the Director motu proprio.
No, the Office will not require any proof of use in commerce during the initial processing of the trademark application.
Yes, a six-month extension may be granted if requested before the expiration of the three-year period and upon payment of the required fee. Actual use may commence within the extension period.
The declaration must be under oath, specify the applicant's or registrant's name and address, the list of goods or services the mark is used on, the name(s) and address(es) of establishments where the goods/services are sold or rendered, and may include the website if sales are online.
No, the date of first use is not required in the declaration of actual use.
Yes, actual use for some goods or services in a class constitutes use for the entire class.
Accepted evidence includes labels used on the mark, website pages showing sales/services in the Philippines, photographs of the products or service establishments, brochures or advertisements, sales receipts for online sales, and contracts for services showing use of the mark.
No, computer printouts of the drawing or reproduction of marks are not accepted as evidence of actual use.
A Declaration of Non-Use may be filed within three years (or extension period) when use is prohibited by another government agency, where a restraining order or injunction prohibits use, or where the mark is subject to opposition or cancellation. It must be under oath and state facts prohibiting use.
A certificate of registration remains in force for ten (10) years.
The registrant must file a declaration of actual use or show valid reasons based on obstacles to use within one (1) year from the fifth anniversary date, or else the mark will be removed from the register.
No, the declaration must be filed without the need for any notice from the Office.