According to Section 146 of the Philippine IP Code, a certificate of registration may be renewed for an additional ten (10) years upon the expiration of its current validity by filing a request and paying the applicable fee. This request may be filed at any time within six (6) months before the expiration of the registration period, or it may be filed within the six (6) months following the expiration, subject to the additional fee. Furthermore, if the owner of the trademark fails to renew it, the protection it has is no longer valid.
How to Renew a Trademark Registration?
The trademark will be removed from the Intellectual Property Office of the Philippines (IPOPHL) Register if the request to renew registration is not filed. To renew a trademark, the applicant must follow these procedures:
- File an Application. Applicants may file their application for renewal online at https://ipophil.gov.ph. They may also personally file it at the Intellectual Property Office of the Philippines (IPOPHL).
- File a Response. If the applicant received an Official Action on Renewal from the IPOPHL, they must file a response to it within two (2) months from the mailing date. If the IPOPHL has no objections, it will issue a Notice of Issuance.
- Pay Fees. Applicants shall pay the filing fees under the Notice of Issuance within two (2) months from the mailing date.
- Issuance. The IPOPHL will issue a Renewal Certificate of Registration to the applicant in three (3) to four (4) months from the date the Notice of Issuance was paid.
What are the Requirements for Renewal of Trademark Registration?
The applicants must prepare the following required documents in the request of Renewal of Trademark Registration Form in the Philippines are the following:
- Title of the Mark
- Registration Number
- Date of Registration
- Date of Filing of the Original Application and Class Number
How Much is the Cost for Renewal of Trademark?
Maintenance fees are applicable to all trademarks that are issued and must be paid in order to keep the trademark registered. The maintenance fee must be paid according to the schedule and entity, which are as follows:
Schedule | Small Entity (Less than 100M worth of assets) | Big Entity (More than 100M worth of assets) |
3rd year DAU (per class) | ₱900.00 | ₱1,920.00 |
5th year DAU (per class) | ₱1,100.00 | ₱2,400.00 |
Renewal DAU (per class) | ₱1,100.00 | ₱2,400.00 |
Mid-Renewal DAU (per class) | ₱1,100.00 | ₱2,400.00 |
When to Submit the Required Declaration of Use (DAU)?
Intellectual Property Office of the Philippines (IPOPHL) must receive a Declaration of Actual Use (DAU) in accordance with the following timeline:
- Within three (3) years of the date the trademark application was filed, or within three (3) years of the date of foreign registration or subsequent designation.
- Within a year of the mark’s fifth (5th) anniversary of registration, or within a year of the protection statement’s fifth anniversary.
- After the fifth (5th) anniversary of each renewal, but no later than one (1) year.
- In accordance with IPOPHL MC No. 17-010 Rule 204, a DAU is required to be provided for renewed registrations no later than one (1) year after the date of renewal. This regulation only applies to registered marks that are due for renewal starting on January 1, 2017, regardless of when the request for renewal is filed.
What Types of Trademark Evidence are Acceptable to the Intellectual Property Office of the Philippines (IPOPHL)?
According to the Intellectual Property Office, the applicant must provide an actual proof of use in order to file a Declaration of Actual Use (DAU). The following will be recognized as evidence of actual use of a trademark in the Philippines:
- Marks as these are used on labels;
- Downloaded pages from the applicant’s website or registrant that clearly proves that the products are being sold or the services are being offered in the Philippines;
- Pictures (including digital images printed on ordinary paper) of products showing the marks are used or stamped, mark packaging, and the location where the services are being provided;
- Pamphlet, brochures, billboards, and other advertising materials proving the actual use of the mark on the products being sold or services being provided in the Philippines;
- For sales conducted online, the applicant must show receipts of the products or services provided, or other similar proof of usage that shows that the products are placed on the market or that the services are accessible in the Philippines or that the transaction occurred in the Philippines; or
- Copies of service contracts proving the use of the mark.
Moreover, the applicant is not required to submit every category on the aforementioned list.
Why Is It Important to Renew a Trademark?
Applying for the Renewal of Trademark in the Philippines is essential because of the following reasons:
- Protection of Rights. Renewing a trademark ensures that the applicant maintains exclusive rights to use the mark for his/her goods or services. Without renewal, his/her trademark could expire, leaving it vulnerable to infringement by others.
- Legal Requirement. The Intellectual Property Office of the Philippines (IPOPHL) requires trademark owners to renew their trademarks periodically to keep them active. Failure to renew can result in the loss of legal protection of the mark.
- Preservation of Goodwill. Trademarks often represent the goodwill and reputation of a business. Renewing the trademark helps preserve the value associated with the applicant’s brand and prevents others from capitalizing on his/her established reputation.
- Prevention of Abandonment. Non-renewal of a trademark can lead to its abandonment, meaning it is no longer actively protected. Abandonment opens the door for others to claim and use the mark, potentially causing confusion among consumers and diluting the distinctiveness.
Need further information and assistance regarding Trademark Renewal? Talk to our team at Duran & Duran-Schulze Law to know more about the requirements and process. Call us today at (+632) 8478 5826 or +63 917 194 0482, or send an email to info@duranschulze.com for more information.
