O n August 1 2017, Memorandum Circular No 17-010 entitled Rules and Regulations on Trade Marks, Service Marks, Trade Names and Marked or Stamped Containers of 2017 (New Rules), took effect. The salient points on actual use of the marks are as follows:
Rule 204: Not only are declarations of actual use (DAU) required to be filed on the third year, and within one year from the fifth anniversary of the registration, but also (i) within one year from date of renewal (renewal DAU) and (ii) within one year from the fifth anniversary of each renewal (mid-renewal DAU). The DAUs must be coupled with specimens of proof of use and payment of the filing fees. Failure to comply with this Rule shall cause the refusal of the registration or the removal of the registered mark from the Register.
Rule 206: For trade mark registrations due for renewal on January 1 2017 and onwards regardless of the filing date of the request for renewal, the renewal DAU must be filed within the required period.
Rule 209: The rule that actual use of some of the goods or services in the same class constitutes use of the entire class is maintained in the New Rules. This Rule, however, allows for subsequent filing of the DAU, for classes not included in the first DAU filing, provided that it is filed within the the three-year period or within its extension. If no subsequent DAU is filed, the classes shall be automatically dropped from the application or registration without notice.
Rule 212: A declaration of non-use (DNU) is allowed under certain grounds, all independent of the will of the trade mark owner, and within the same period similar to the DAU. Except in the case of a DNU filed on the ground of a pending litigation or prohibition by the court or another government agency, the non-use shall not be allowed for a period of more than six years. Use must be commenced within one year from the fifth anniversary, otherwise the mark shall be removed from the Register.
|Editha R Hechanova|
Hechanova & Co., Inc.
Salustiana D. Ty Tower
104 Paseo de Roxas Avenue
Makati City 1229, Philippines
Tel: (63) 2 812-6561
Fax: (63) 2 888-4290