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Many companies have successfully registered trademarks in the Philippines, but due to neglecting a key operation - the "trademark oath", the trademark has become invalid and even been preemptively registered by competitors! This article provides a detailed explanation of the Philippine trademark oath system to help you avoid pitfalls!
1、 What is' Trademark Oath '?
According to the Philippine Intellectual Property Code, after trademark registration, a "Declaration of Actual Use" (DAU) must be submitted regularly, which is a notarized affidavit proving that the trademark is actually used in the Philippines or explaining the legitimate reasons for not using it.
Core function: To prevent trademark hoarding and ensure that trademarks are truly put into the market.
1. Key time nodes
① Oath taken in the third year
It needs to be submitted within 3 years from the date of trademark application, and a grace period of 6 months can be applied for.
② Oath taken in the 5th year
It needs to be submitted within 5-6 years from the date of trademark registration.
③ Renewal Oath
Submit within 1 year of each renewal (e.g. anniversary of registration for 10 or 20 years).
④ Oath every 5 years after renewal
The oath must be submitted again within 5-6 years after each renewal.
2. Special circumstances
If the trademark has not been actually used (such as due to the epidemic, policy restrictions, etc.), a written explanation of the plan to restore use must be submitted (such as contracts and promotional plans for entering the Philippine market within the next 2 years).
3、 How to prepare the oath document?
① Used trademark
Sales invoice, screenshot of Philippine website, advertising placement record, product packaging image (including trademark and "Made/Sold in the Philippines" logo).
② Unused trademark
Reason for non use (such as customs restrictions, natural disasters) Restoration schedule (specific to each quarter).
③ General requirements
A notarized affidavit in the Philippines, signed by the legal representative or authorized agent of the enterprise (non Philippine enterprises must entrust local lawyers to handle it).
4、 Serious consequences of not submitting
After missing the deadline, the trademark will directly enter the "invalidation list" and lose exclusive rights.
2. Revoked by a third party
Competitors can use this opportunity to apply for trademark revocation and seize the market.
3. Reapply for risk
Even if re registered, the original trademark may still be rejected due to "invalidation record".
1. Prepare evidence 6 months in advance
Regularly keep sales and promotional records (it is recommended to archive them once every quarter).
Unused trademarks can be used as evidence of "planned use" by signing agency agreements or leasing warehouses in advance.
2. Follow the official schedule
The Philippine Intellectual Property Office (IPOPHL) may adjust its policies, and reminders can be subscribed to through its official website (www.iphophil. gov.ph) or agency.
3. Entrusting professional agents
Non Philippine companies must submit documents through local lawyers, and it is recommended to choose a law firm familiar with Chinese business (such as a well-known local agency in Manila).
4. Madrid Trademark Special Attention
Even if registered internationally, a separate Philippine use declaration must be submitted and cannot be directly replaced by international documents!
6、 Frequently Asked Questions and Answers
1. Does the trademark meet the "use" requirement as it is only sold on e-commerce platforms?
Answer: Sure! Need to provide e-commerce links and order records within the Philippines (including buyer information from the Philippines).
2. How to prove "legitimate reasons" for not using a trademark due to force majeure (such as epidemics, natural disasters)?
Answer: Official documents are required to provide supporting evidence, such as:
Epidemic: Entry restriction notices issued by the Philippine government, flight cancellation notices, and transportation interruption certificates issued by logistics companies.
Natural disasters: Local disaster announcements, photos or reports of warehouse damage in the Philippines. be careful! Oral statements alone are invalid and must be accompanied by third-party authoritative evidence.
3. Can the authorization of a trademark to a Philippine agent be considered as' valid use '?
Answer: Sure! But the following documents need to be provided:
The trademark authorization agreement signed by both parties (indicating the scope and duration of authorization).
Sales records of agents, proof of advertising placement (such as photos of agent stores, local media advertisements).
Copy of the agent's business license in the Philippines.
4. When registering, multiple product categories were specified, but only some categories were actually used. What should I do?
Answer: It is necessary to clearly state the category of actual use in the affidavit and provide corresponding evidence. Unused categories may be requested to be removed by the Philippine Intellectual Property Office (IPOPHL), otherwise the entire trademark may be revoked due to "insufficient use".
5. Can I make up for missing the deadline for taking the oath?
Answer: There is almost no room for remediation! There is no grace period for the oath taking period under Philippine law, and the trademark will automatically become invalid after the deadline. If the delay is caused by the agency's mistake, legal action can be attempted to claim compensation, but the original trademark rights cannot be restored.
6. Can temporary promotions or trial sales activities be considered as "use"?
Answer: Short term activities are acceptable! Evidence such as sales invoices, activity posters, and media reports during the promotion period must be provided. But IPOPHL may require continued use in the future, otherwise it may still be questioned during the next oath.
7. Does the change of trademark holder's company name affect the oath taking?
Answer: You need to apply for trademark information change first! If the company name, address, etc. do not match the registered information, a change application must be submitted to IPOPHL (with payment required), and after the change is completed, an oath document must be submitted in the name of the new entity.
