The most frequently asked questions on trade mark prosecution in the Philippines concern the filing of the declaration of actual use (DAU). Prior to the promulgation of the IP Code on January 1 1998, proof of actual use of the mark in the Philippines was only required after the mark has been registered. However, under the IP Code, the applicant is required to file the DAU within three years from the filing date, and then, within one year from the fifth anniversary of the date of registration of the mark. Below are some of the more common concerns raised by applicants.

The first question concerns the date of filing. Under Section 124.2 of the IP Code, the filing of the DAU within three years from the filing date is mandatory and failure to do so would result in the refusal of the of the mark, or its removal from the registry, which the Intellectual Property Office of the Philippines (IPOPhil) can do motu proprio (rule 204 ) . There have been several instances where a mark has been granted registration even with no DAU having been filed. This does not mean, however, that the registrant is now exempt from filing the DAU. As the law provides, the mark is subject to removal from the registry for failure to file the required DAU. A one-time request for extension to file the DAU beyond the three-year period is available to applicants (IPOPhil order no 21 s 2001). This extension cannot be used for the filing of the DAU due five years after the date of registration.

For an applicant claiming priority from an earlier filed application in countries which are signatories to the Paris Convention or the WTO, and who decides to convert the application to one based on intent to use, thereby waiving the convention priority claim, the reckoning of the three-year period starts on the date of the filing of the request for conversion (rule 618). In an appeal from a final rejection of the trade mark examiner in the prosecution of trade mark application no 4-2002-001491 for the mark Simmons Bettersleep in the name of the applicant Simmons (Southeast Asia) PTE Ltd, the director of trade marks, in her decision, dated August 7 2007, stated that without prejudice to the refiling of the application, the rejection by the examiner of the application for failure to file the DAU or failure of the applicant to substantially comply with the requirements of rule 618, concerning the written waiver of convention priority and request for conversion, was proper.

People also ask about filing an affidavit or declaration of non-use. Under section 152.1 of the IP Code, non-use of the mark may be excused if caused by circumstances arising independently of the will of the trade mark owner. Lack of funds shall not excuse non-use of the mark. A number of trade mark examiners in IPOPhil have refused applications for failure to file the DAU, and have not recognized affidavits or declarations of non-use on the ground that said non-use affidavits are only applicable to registered marks, Section 152 being found under the heading of "Effect and Notice of Registration". In the case of the application for the for the mark Flavettes (application no 4 -1998-000556) in the name of Chemical Company of Malaysia Berhad, covering goods in class 5, such as dietetic goods adapted for medical purposes, the applicant filed an affidavit of non-use in lieu of the DAU on the grounds that its failure to use the mark was because of the pendency of the product registration with the Bureau of Food and Drugs (BFAD) which is a condition prior to selling the goods in the Philippines. The examiner disregarded the affidavit of non-use and issued a final rejection of the application. On appeal, the director of trade marks reversed the examiner's refusal and accepted the affidavit of non-use in place of the DAU, and ruled that Section 152.1 is clear and that it does not provide a qualification that it applies only to registered marks, and further stated that the reason given by the applicant is indeed independent of its will (the prohibition of sale imposed by government regulation).

Editha R Hechanova

Hechanova Bugay & Vilchez
GF Chemphil Building Antonio Arnaiz Ave
Makati City 1223
Philippines
Tel: +63 2 888 4293
Fax: +63 2 888 4290
editharh@info.com.ph