New rules on trademark use introduced
The Philippines is somewhat unique in Asia in having strict use requirements for trademarks, similar to those in the United States. However, as business has changed over time, new methods of using marks have arisen, creating uncertainties.
New trademark rules now clarify several areas:
- Online use is clearly defined to be valid proof of use (the trademark owner must provide the relevant website details).
- Use of some goods in a class is sufficient to maintain the registration for the whole class.
- Use in one class also covers related classes - for example, software in Class 9 and software services in Class 42 of the Nice Classification. Care must be taken to ensure the correct claims are made in the declaration of use.
- Declarations of use should still be filed for marks which are under attack (eg, cancellation actions) or subject to injunctions.
- Applications filed under the Madrid System 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.
Nick Redfearn, Rouse, Indonesia
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