Declaration of use in international registrations

By Editha Hechanova and Joy Marie Gabor-Tolentino, Hechanova & Co

The Philippines acceded to the Madrid Protocol on 25 July 2012. According to the Intellectual Property Office of the Philippines (IPOPHL), filings through the Madrid route average about 18% of the total. A recurring inquiry of holders of international registrations (IRs) designating the Philippines involves the submission of the Declaration of Actual Use (DAU). The notice to file the DAU is indicated on the box marked “additional information” in the statement of grant submitted by the IPOPHL to the International Bureau (IB).

Date of reckoning the third year DAU deadline for international registrations. The date of reckoning the filing of the third year DAU has been a source of confusion for IR holders. The Madrid Protocol Concerning the International Registration of Marks (WIPO Information Notice No. 18/2013) provides that IR holders designating the Philippines must file the third year DAUs of the mark, coupled with evidence, before the IPOPHL, and upon payment of a fee:

Editha Hechanova
President and CEO
Hechanova & Co

(a) within a three-year period, counted from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines.

The above provision in notice No. 18 has raised doubt among IR holders, particularly if the Philippines has not been originally designated, or when the Philippines has been subsequently designated.

In the case of a subsequent designation, the WIPO database shows two different dates: (1) date of subsequent designation, and (2) date of recording (date of notification from which the time limit to notify starts – notification to member states).

Notice No. 18 finds support in rule No. 20 of IPOPHL’s Memorandum Circular No. 17-011, which took effect on 2 August 2017, and which provides that the DAU must be filed within three years from the date of the international registration, or the date of recording of the territorial extension to the Philippines made subsequently to the international registration.

Joy Marie Gabor-Tolentino
manager and senior associate
Hechanova & Co

Because of the inconsistency between notice No. 18 and rule No. 20 on one hand, and the additional information on the statement of grant on the other, IR holders mistakenly assume that the reckoning date is the date of recording, as indicated in notice No. 18.

However, the date of the recordal of the subsequent designation being referred to is actually the date of subsequent designation, as explained by the Madrid Unit of the IPOPHL, responding to inquiries from many Philippine agents. There is need, therefore, for the IPOPHL to correct rule No. 20 and have WIPO’s Information Notice No. 18/2013 corrected as well, since a number of IR holders have experienced rejections of the DAUs filed.

Declaration of non-use. If the IR holder has not used the mark within the three-year period, a one-time, six-month extension may be requested before its expiration, and the mark can be used within that said extension period. Or, a declaration of non-use (DNU) can be filed instead of the DAU, based on valid grounds, such as:

(a) The IR holder is prohibited from using the mark in commerce because of a requirement imposed by another government agency;

(b) There is a restraining order or injunction issued by the Bureau of Legal Affairs of the IPOPHL, or the courts, or quasi-judicial bodies, prohibiting use of the mark; and

(c) The mark is the subject of an opposition or cancellation action.

The IPOPHL will only accept causes that are independent of the will of the trademark owner. Lack of funds is not an acceptable excuse for non-use of the mark. There have been instances where the owner of the mark being opposed or cancelled missed the DAU or DNU filing, resulting in the dismissal of the opposition or cancellation action.

For example, the decision in the opposition case of Starbucks Corporation v Ferdinand A. Floirendo (25 January 2018), is significant as it highlights that failure of the applicant of the mark being opposed to file the DAU or DNU is deemed a voluntary and final abandonment of the application or registration, resulting in its refusal by the IPOPHL.

In this case, respondent Floirendo applied to register the mark “STARBUKOL” for use on coffee, tea, bread, sandwiches, etc. “Bukol” is a Tagalog word and can refer to a swelling such as a lump. Starbucks opposed it, claiming confusing similarity to “STARBUCKS”.

Even if Floirendo did not file his answer, the BLA director ruled in favour of Floirendo, finding “STARBUKOL” not confusingly similar with “STARBUCKS”. On appeal, the Office of the Director General (ODG) of the IPOPHL ruled that because of Floirendo’s failure to file the required DAU for STARBUKOL, the latter is considered refused, and that there was no need to resolve the case on the merits since an academic discussion of a case presenting a moot question is not necessary “as a judgment thereon cannot have any practical legal effect or, in the nature of things, cannot be enforced”.

Editha Hechanova is president and CEO of Hechanova & Co and Joy Marie Gabor-Tolentino is trademark manager and a senior associate at the firm

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