TRADEMARK CLIENT

We are the trademark attorney for ABC in Turkey. We want to know that the procedure of Trademark certificate of use in Philippines. Our trademark is ABC numbered 4/2013/00__. Please give us information about the obligation to use the trademark.

AAA IPRIGHT

Dear B__

Thank you for your email.

As for TM Reg. No. 4/2013/00___, your client has a deadline to file the 5^th Year Declaration of Actual Use on 10 October 2019. Our total fee for filing the 5^th DAU for this trademark registration is USD 233, broken down as follows:

Description	Agent Fee	Official Fee	Disbursement	Total
Filing of 5th Year Declaration of Actual Use	USD 190 (Two classes)	USD 108 (Two classes)	USD 10	USD 323

Enclosed is the draft POA for the signature of the client. There is no need to have the POA notarized or legalized. We only require a scanned copy of the POA which you can forward to us by email.

TRADEMARK CLIENT

And we want to know that If we don’t have any use in Philippines, is there any risk to cancelation of the trademark?

AAA IPRIGHT

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.

Also, note that the Declaration of Actual Use must be submitted together with the corresponding evidence of use which may be any of the following:

a) labels of the mark as these are used;

(b) downloaded pages from the website clearly showing that the goods are being sold or the services are being rendered in the Philippines;

(c) photographs (including digital photographs printed on ordinary paper) of goods bearing marks as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;

(d) brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;

(e) receipts or invoices of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines;

(f) copies of contracts for services showing the use of the mark.

TRADEMARK CLIENT

We do not use the trademark in Philippines. So must be give any declaration of the trademark not use or don’t need? If must please send us its required documents to star this operation.

AAA IPRIGHT

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.

– You can also check the Fee of Trademark In Philippines here.

–  You could visit here to see Procedure of Philippines Trademark Registration.

–  Regarding the required documents of trademark in Philippines, you can see here.

– Other questions of trademark in Philippines here. 

Contact AAA IPRIGHT: Email: [email protected]