Trademark is considered abandoned when the applicant fails to file the Declaration of Actual Use (DAU), their mark is similar to an existing registered mark, or simply abandons the application process. In addition, failing to renew a trademark registration in a specific time could result in trademark abandonment.
Revival of Abandoned Trademark in the Philippines
The Intellectual Property Code of the Philippines, also known as Republic Act No. 8293, governs trademarks in the country and provides provisions related to the registration, renewal, and cancellation of trademarks. Additionally, it protects and secures the intellectual property rights and creations of its owner.
According to the Intellectual Property Office of the Philippines (IPOPHL), a trademark is a word, a group of words, sign, symbol, or a logo that identifies and differentiates the source of the goods or services of one entity from those of others. Additionally, maintaining the trademark registration is important since the trademark holds significant value for any company. It functions as a representation of a company’s brand identity and setting it apart from rivals. Hence, when a trademark is abandoned, it forfeits its legal protection, rendering it susceptible to unauthorized usage by third parties.
Why Does a Trademark Get Abandoned?
A trademark gets abandoned if the owner fails to maintain his trademark, to be more specific, if the owner fails to file the Declaration of Actual Use. From that moment, the owner loses the right, protection given to his mark and worst the mark will be removed and marked abandoned from the Intellectual Property Office of the Philippines (IPOPHIL) register. But is it possible to revive the mark which has once been abandoned? Yes, although reviving an abandoned trademark is optional. If the reason for abandonment is the failure to submit a Declaration of Actual Use, the owner must request an additional six months from IPOPHIL to submit it, which may incur an additional fee as a penalty. But if the owner fails to renew its trademark registration, the mark will automatically lose its rights and protection. However, if the owner desires to use the mark and prevent others from utilizing it, filing a revival request to IPOPHL is a must, but still the owner’s decision.
When Can I File a Request for Trademark Revival?
An abandoned application may be revived as a pending application within two (2) months from the date of abandonment. It is important to note that there will be no revival of an abandoned application that has been revived once before on the same issue.
How to Revive an Abandoned Trademark?
To revive a trademark registration, the applicant must provide and submit the necessary requirements which are a letter of request to revive addressed to the Director General of the IPOPHIL and pay the corresponding fees, depending on the type of revival request and the entity. For small entities, the applicant shall pay PHP570.00, while PHP1,200.00 for big entities. The applicant must also file the revival application online at https://onlineservices.ipophil.gov.ph/edocFileTrademarks.
Moreover, a Notice of Abandonment (NOA) is issued if the applicant failed to respond within the designated timeframe to IPOPHL. Thus, NOA can only be provided if the applicant has a record. If not, he/she must present an authorization.
What are the Benefits of Reviving an Abandoned Trademark?
The abandoned trademark may be the reason to have obstacles in achieving the company’s goals since it can be legally used by unfair competitors. Thus, poor quality products and unsatisfied services may reflect under the well-known owner of the used trademark, resulting in loss of trust and reputation for the latter.
To prevent and avoid potential issues associated with the use of your logo, company name, or trademark, it is essential to maintain the trademark registration in the Philippines. Reviving a trademark in the Philippines offers numerous benefits that can help protect and enhance the value of a company’s brand, which are as follows:
- Legal Protection. Maintaining or reviving the registration proves the legal ownership and exclusive rights to use the trademark for the specified products or services of the company. It prevents other companies from using identical or similar marks for similar products or services, provides an additional safeguard, protects the company against those seeking to profit from their brand and reputation through unauthorized use of their mark.
- Right to Ownership. The registration grants the owner an exclusive right to utilize the mark. It also serves as clear evidence of the owner’s right to ownership. The validity of the registration and the rights conferred upon the owner are established through trademark registrations, renewals, and revivals, which serves as an initial evidence of the right to employ the mark in connection with their products or services, the ability to pursue legal action for trademark infringement, recourse for unauthorized use, and the right to challenge the use or registration of highly similar symbols or marks.
- Identity and Market Recognition. Establishing a mark sets the company apart from their competitors. It enables the customers to easily identify the company’s products or services. This is particularly beneficial in shaping the brand’s identity. Additionally, it could increase customer’s trust and loyalty to the company.
- Enhance Value. As a business expands and achieves success, a trademark accrues inherent value, often becoming the most prized asset of the company. By reviving the trademark, the company secures exclusive rights to its usage, preventing others from leveraging identical or similar marks. Through franchise agreements, the company can monetize their trademark by permitting others to utilize it for a fee. Moreover, potential investors look for a registered trademark as a form of assurance before committing fully to the company’s brand.
Failure to revive your trademark allows it to be vulnerable to unauthorized usage by third parties, posing risks to your brand integrity and overall business operations. In addition, it is crucial for trademark owners to consult with a lawyer or a law firm to understand the specific requirements and processes for trademark revival in the Philippines.
Need further information and assistance regarding Revival of Trademarks? 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.
