Monday, July 8, 2013

New rules on trademark use in the Philippines

The Philippines is somewhat unique in Asia in having strict use requirements for trademarks (similar to the US). However as business has changed over time, new methods of using marks have arisen creating uncertainties. Now new trademark rules clarify several areas:

A. Online use is clearly defined to be valid proof of use - by providing the relevant website details

B. Use of some goods in a class is sufficient to maintain the registration for the whole class.

C. Use in one class also covers related classes - so for example class 9 software and class 42 software services. Care must be taken to ensure the correct claims are made in the Declaration of Use.

D. Declarations of Use should still be filed for marks which are under attack, e.g. cancellation or subject to injunctions.

E. Applications filed under Madrid still require Declarations of Use, within newly specified periods.
Declarations of use require careful planning and make trademark management in the Philippines more complex than elsewhere in Asia.

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