Important Thing in Maintaining Your Trademark in the Philippines

Think of your trademark like your memory. When you keep practicing a skill—say playing guitar or speaking a new language—your brain builds stronger connections and holds onto that knowledge longer. The same goes for trademarks: registering a mark gives you exclusive rights, but if you don’t actually use it, those rights will eventually fade away.

In the Philippines, the Intellectual Property Office (IPOPHL) makes this very clear. Owning a registered trademark isn’t enough—you need to prove you’re using it in business. This is where the Declaration of Actual Use (DAU) comes in. If you don’t file it, IPOPHL can cancel your registration and free up the mark for others to use.

Why IPOPHL Requires Proof of Use

The DAU isn’t just red tape. It’s meant to stop people from “trademark squatting”—where someone registers a brand name without using it, hoping to block others or even demand money later.

Since the Philippines uses a first-to-file system, whoever files first generally has the stronger claim. Without the DAU requirement, squatters could easily hoard marks. By requiring actual proof of use, IPOPHL ensures that only serious, active businesses get to keep their trademarks.

This system also keeps competition fair. When old or unused marks are cleared out, they become available for others who genuinely plan to use them in trade.

When and How to File a DAU

To keep a Philippine trademark alive, you need to file a DAU with supporting proof (like product labels, ads, or receipts) at specific times:

1. Within 3 years from the filing date of your application.
   • You can ask for a one-time 6-month extension, but only if you apply before the 3 years are up.
2. Within 1 year from the 5th anniversary of your registration (or renewal).
3. Within 1 year from the renewal date of your registration.
   • This applies to all renewals from January 1, 2017 onwards.

If you can’t use your mark yet for valid reasons, IPOPHL allows you to file a Declaration of Non-Use instead. But this only applies in limited cases—for example, if a government agency has banned use of the product, or if there’s a pending court order stopping you.

Real-World Lessons

• Samsung vs. Kepco (2014, IPOPHL): A registration was cancelled because the owner didn’t file the DAU. The lesson? Even global brands can lose rights locally if they ignore the requirement.
• Zara vs. Zarangola (2016, Supreme Court): The Court stressed that trademarks aren’t just about filing papers—they’re about actual use in the market.
• Jollibee vs. IBC International (2007, Court of Appeals): Jollibee won because it had consistently used its marks and built strong recognition. Active use was key to its victory.

Copyright and Trademarks: A Double Layer of Protection

Many brand assets can be protected by both trademark and copyright.

• A logo can be a copyrighted artwork and a registered trademark.
• A slogan may qualify for trademark protection if it’s distinctive, and copyright if it’s original.

For instance, San Miguel Beer’s logo is protected both ways: as a copyrighted design and as a registered trademark. This makes it much easier for them to stop counterfeiters.

Key Takeaway

Your trademark is like a muscle—if you don’t use it, you lose it. Filing a DAU is IPOPHL’s way of making sure marks are alive in the marketplace, not just sitting in a drawer.

If you’re a local entrepreneur, you can file on your own, though it takes time to learn the process. If you’re a foreign applicant, Philippine law requires you to hire an accredited agent. Either way, getting help from professionals like Brealant, Federis, or Hechanova can save you from costly mistakes.

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