DECLARATION OF USE

If you are an owner of a trademark registration in the Philippines, there are

several maintenance requirements to look after in order to ensure that your
registration is kept valid and enforceable. Ownership of trademarks in the
Philippines not only depends on its successful registration before the
Intellectual Property Office. This ownership, and its continued validity,
depends on the owner’s ability to actually use the same in the Philippines.
Under Philippine trademark regulations, a statement of actual use of a
trademark in the Philippines is shown through a Declaration of Actual
Use or DAU. The Declaration of Actual Use or DAU is a sworn statement, duly
signed by the trademark owner or a representative, and then notarized. The
Declaration of Actual Use or DAU essentially contains statements to the effect
that the trademark is actually being used in the Philippines, that it is being used
for the goods and services identified, and that goods are being sold, or the
services are being rendered, at a specific store or location in the Philippines or
through a specific website.

The Different Types of DAUs

Originally, there were only two (2) Declarations of Actual Use or DAUs required
to be filed under Philippine trademark regulations:

(a) the 3rd year Declaration of Actual Use or the 3rd DAU, which must be filed
within three (3) years from filing date of the trademark application; and

(b) a 5th anniversary Declaration of Actual Use, also commonly referred to as

the 5th anniversary DAU, which is required to be filed during the fifth
anniversary of the registration of the mark.

Fairly recently, however, the Intellectual Property of the Philippines, through

Memorandum Circular No. 17-010 or the Rules and Regulations on Trademarks,
Service Marks, Trade Names, and Marked or Stamped Containers of 2017,
added another Declaration of Actual Use or DAU requirement. The new
requirement is the filing of a Declaration of Actual Use or DAU within one (1)
year from date of renewal of the trademark registration and it is called a
Renewal Declaration of Actual Use or a Renewal DAU. This is essentially uses
the same DAU form recommended by the Intellectual Property Office but this
time, the requirement to file the DAU comes from the fact of renewal of the
trademark registration once the previous ten (10)-year term has expired.

The Deadlines to File the DAUs

Based on the previous discussion, there are essentially three deadlines to

remember when looking after the maintenance of a trademark registration in
the Philippines. As a summary, the deadlines to remember for filing a
Declaration of Actual Use or DAU in the Philippines are the following:

1. Within three (3) years from filing date of the trademark application (3rd
year Declaration of Actual Use;
2. During the 5th anniversary of the registration of the trademark (5th
anniversary Declaration of Actual Use); and
3. Within one (1) year from renewal of a trademark registration (Renewal
Declaration of Actual Use)
Acceptable Proof of Actual Use

The filing of a Declaration of Actual Use or DAU should come with proof of
actual use of the trademark in the Philippines. Under the latest regulations
issued by the Intellectual Property Office on Declarations of Actual Use or
DAUs, proof of actual use can be any of the following:

1. Labels of the marks as actually used;

2. Downloaded pages from registrant’s website clearly showing that the
goods are being sold or the services are being rendered in the
Philippines;
 3. Photographs of labels or goods bearing the marks as these are actually
used;
4. Brochures or advertising materials showing use of the mark in the
Philippines;
5. For online sale, receipts of sale of 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 or that the transaction took
place in the Philippines; or
6. Copies of contract for services showing the use of the mark.
Without the proof of actual use of the trademark in the Philippines, the
Declaration of Actual Use or DAU will be treated as incomplete and the
Intellectual Property Office will issue an office action requiring its submission. If
no proof of actual use is submitted, the Declaration of Actual Use or DAU will
not be given due course.

Extension of Time to File DAU

Trademark owners who are not yet ready to file the Declaration of Actual Use
or DAU normally ask if there is a way to extend the deadlines. Under Philippine
trademark regulations, only the 3rd year Declaration of Actual Use or DAU may
be extended. The rules allow an extension of six (6) months within which to file
the 3rd year Declaration of Actual Use or DAU upon filing of the necessary
request and the payment of the required fees. It should be noted that the
request for extension should be filed before the lapse of the original deadline
to file the 3rd year Declaration of Actual Use or DAU.

As to the two other types of Declarations of Actual Use or DAUs, extension is

not possible. Hence, the 5th anniversary Declaration of Actual Use or DAU and
the Renewal Declaration of Actual Use or DAU should be filed when they
become due, otherwise their non-filing will result in the removal of the
registration from the registry.
Declaration of Non-Use

Under the Intellectual Property Code of the Philippines, non-use of a trademark

is allowed in certain instances. Through the submission of a Declaration of
Non-Use or DNU, the trademark registration will remain active. The
submission of a Declaration of Non-Use or DNU is allowed under the following
specific situations:

 Where the applicant or registrant 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 the
services;
 Where a restraining order or an injunction was issued by the Bureau of
Legal Affairs, the courts or quasi-judicial bodies prohibiting the use of the
mark; or
 Where the mark is the subject of an opposition or cancellation case
It should be noted that the submission of a Declaration of Non-Use or DNU is
an exception to the rule and the grounds where its submission is allowed is
limited to the ones mentioned above. No other grounds will be accepted by
the Intellectual Property Office.

The Effect of Non-Filing of DAUs

Filing the Declaration of Actual Use or DAU, or the Declaration of Non-Use or

DNU in certain instances, is a crucial maintenance requirement under Philippine
trademark regulations. The non-filing of the DAUs when they become due will
cause the rejection of the application, if the mark is still in the examination stage,
or the removal of the mark from the trademark registry if it is already
registered. Hence, it is highly important that the deadlines for the filing of
Declarations of Actual Use or DAUs is noted and that the necessary documents
are filed when they become due.
TRADEMARK REGISTRATION

What are the requirements for filing a trademark application in the Philippines?

To apply for trademark registration in the Philippines, an applicant must provide the
following:

1. Signed trademark application form, which includes:

1. The country or residence of incorporation;
2. Name and address of the local representative, if the applicant is not domiciled in
the Philippines;
3. Details of the priority claim, such as filing date, application number and country or
state where the application was filed, designation of goods and services,
reproduction of the mark, a transliteration or translation of the trademark or some
parts of the trademark, an indication whether the trademark is three-dimensional,
a collective mark or for a stamped or marked container of goods, and colors
claimed, if any.
1. Signed Power of Attorney, if the filing is through a representative;
2. Plain copy of the home application, if priority application is claimed;
3. Sworn statement that the applicant is a small entity, if applicable.

What are the minimum requirements to secure a filing date for a trademark
application?

To secure a filing date, the applicant must file the trademark application form indicating
the name and address of the applicant, reproduction of the mark, and list of goods and
services, and then pay the required fee.

Can a Power of Attorney be filed after the filing of the trademark application?

Yes. The Power of Attorney can be filed even after the trademark application has been
filed.

Is multi-class trademark application allowed in the Philippines?

Yes, one (1) application may cover several classes of goods and services under the
Nice Classification.

A multi-class trademark application will result in one (1) trademark registration only.

Is a divisional trademark application allowed in the Philippines?

Yes, a multi-class trademark application, with or without claim of convention priority,

could be divided into several trademark applications, called divisional applications, to
distribute the goods and/or services covered by the initial trademark application. The
divisional applications shall preserve the filing date of the initial trademark application or
the benefit of the right of priority.

Could an issued trademark registration covering several classes of goods and

services be divided?

Yes, during the term and enforceability of a trademark registration, it could be divided to
distribute the covered goods and/or services, upon formal request and payment of
prescribed fees and provided that:

1. The division shall not involve any change in the registration that requires
republication of the trademark, and
2. A single class shall not be subdivided.

Is prior commercial use of the trademark required for filing a trademark or service
mark application?

No. Commercial use of the trademark is not required at the time of the filing of the
trademark application.

When is use of the mark required to be submitted in order to maintain protection

of the trademark?

The applicant or registrant must submit a Declaration of Actual Use (DAU) along with
the supporting Evidence of Actual Use (EAU) on the following periods:

1. Within three (3) years from filing date of the application, subject to an extension
of 6 months;
2. Within one (1) year from the fifth (5th) anniversary of the registration;
3. Within one (1) year from date of renewal; and
4. Within one (1) year from the fifth (5th) anniversary of each renewal.

Failure to file the Declaration of Actual Use with the supporting Evidence of Actual Use
within the prescribed periods shall result in the automatic abandonment of the
trademark application or the cancellation and removal of the trademark from the
Register.

What are the requirements to file a Declaration of Actual Use with Evidence of
Actual Use?

The minimum filing requirements are as follows:

1. Notarized Declaration of Actual Use form; and

2. Evidence of Actual Use consisting of one of the following:
 Labels of the mark as these are used;
  Downloaded pages from the website of the applicant or registrant clearly showing
that the goods are being sold or the services are being rendered in the
Philippines;
 Photographs of goods bearing the mark 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;
 Brochures or advertising materials showing the actual use of the mark on the
goods being sold or services being rendered in the Philippines;
 For online sale, receipts 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 or that the transaction took place in the
Philippines; or
 Copies of contracts for services showing the use of the mark.

When is non-use of a trademark excusable?

The following are the acceptable reasons for non-use:

1. The applicant or registrant is prohibited from using the trademark because of a

requirement imposed by another government agency prior to putting the goods in
the market or rendering of the services;
2. There is a restraining order or injunction issued by the Bureau of Legal Affairs
(BLA) of the Intellectual Property Office of the Philippines (IPOPHL), courts, or
quasi-judicial bodies prohibiting the use of the trademark; or
3. The trademark is the subject of an opposition or cancellation case.

Non-use of a mark may also be excused if caused by circumstances independent of the

will of its owner, but in no case shall lack of funds be an excuse for non-use of a mark.

If there is no use of the trademark due to any of the foregoing reasons, a notarized
Declaration of Non-Use (DNU) form could be filed, instead of the DAU form.

What evidence is required to support the filing of the Declaration of Non-Use?

Evidence of non-use may be any of the following:

1. A copy of a Bureau of Food and Drug Administration application;

2. Copies of documents filed with the BLA, if the trademark is under opposition or
cancellation; or
3. Copies of the court-issued injunctions (preliminary injunction, restraining order);

If the application has matured into registration before the end of three (3) years
from the filing date of the application, or before the end of the six (6)-month
extension, is the requirement of the Declaration of Actual Use with Evidence of
Actual Use already dispensed with?

No, it is still mandatory for the registrant to file a DAU with the EAU.

What are the additional requirements for applications claiming priority right?

There is no additional requirement if there is an official website of the foreign Intellectual

Property Office where the earliest application was filed, and it is the responsibility of the
Examiner to verify the fact of filing and/or registration of the foreign application.

In the event that the foreign Intellectual Property Office where the earliest application
was filed does not have an online trademark database, the applicant, without need of
notice, shall submit a photocopy of the foreign application or registration and an English
translation, if the application or registration is not in English.