The trademark registrant must utilize the mark in commerce and file a Declaration of Actual Use to the Philippine Intellectual Property Office (IPOPHL). This is an affidavit that describes the registered trademark and the goods and services it covers and the actual goods and services on which the mark is used and where these goods and services can be purchased inside the country.
This declaration must be filed to the IPOPHL within three years after the application’s filing date, one year after the mark’s 5th anniversary, and one year after the registration’s expiration or renewal. It must also be backed up by evidence of usage.
The IPOPHL’s Trademark Regulations provide examples of evidence to prove used. These items include trademark labels, images of goods carrying the brand or of the location where services are provided, advertising materials or brochures, and sales receipts or invoices. IPOPHL allows downloaded pages from websites as supporting evidence that the goods are sold, or services are supplied in the country.
Is it necessary for the owner to demonstrate a use for each listed product and service? No, that is not the case. It is sufficient if the owner can establish that the mark is used on at least one item in a given class. As a result, the owner of a multi-class registration must be able to demonstrate a use for at least one item per class. Classes that do not have use evidence will be removed from the registration list.
The use must be limited to within the country. Foreign owners of service marks appear to be required by law to maintain a presence in the country. How would they be able to provide service throughout the country otherwise?
However, the Supreme Court has ruled that physical presence is not required.
The court recognized the role of the Internet in advertising and supporting a brand in W Land Holding v Starwood Hotels. Even though Starwood — whose trademark covers hotel and motel services — has no hotel in the country, the court agreed to dismiss W Land’s petition for revocation. Starwood, on the other hand, has a website where Filipinos can book reservations online, which the court deems sufficient to keep the trademark registration.
However, simply putting the marks together with the covered products and services on the Internet will not suffice. According to the Supreme Court, internet use must result in an actual transaction used in the Philippine trade. Alternatively, the posting may target consumers in a certain jurisdiction (in this case, the Philippines).
The website’s purpose of targeting customers can be shown by it contains specific information about a specific jurisdiction.
For instance, the website might feature a local phone number, a local version, be in a local language, provide the option to convert to a local language, specify whether domestic payment options are available, or display prices in local currency.
A Declaration of Non-Use may be made if the mark is not used.
A non-use declaration, unlike a declaration of use, explains why a trademark owner is unable to use his mark. The registration will be kept despite the mark’s non-use if the grounds are acceptable to the IPOPHL. For non-use to be justified, it must be due to circumstances beyond the trademark owner’s control. If the mark cannot be used because of a requirement imposed by another agency that must be met first; if the mark cannot be used because of a restraining order or injunction; or if the mark cannot be used because it is the subject of an opposition or cancellation, the IPOPHL currently accepts the following excuses.