PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
2.4 Use in Commerce Under the IP Code and the 2023 Trademark Regula - tions, a trade mark owner is not required to prove use of the mark at the time of filing the application. However, they must prove use of the mark periodically after filing by submitting a notarised Declaration of Actual Use (DAU) and proof of use of the mark within the following periods: • three years from the filing date; • one year from the fifth anniversary of the registra - tion date; • one year from the renewal date; and • one year from the fifth anniversary of the renewal date. Failure to file the DAU will result in the refusal of the pending application or removal of the registration. Unjustified non-use of a registered mark for an unin - terrupted period of three years may also be the basis of a third-party cancellation action. The 2023 Trademark Regulations list the following as acceptable proof of use of a mark: • downloaded pages from the website of the appli - cant clearly showing that goods and services covered by the mark are made available in the Philippines; • photographs (including digital photographs printed on ordinary paper) of the following: (a) labels or packaging bearing the mark as actu - ally used on goods; (b) the stamped or marked container of the goods; or (c) signages bearing the mark on the facade or in any area in the establishment(s) where the mark is displayed; • brochures or advertising materials showing the actual use of the mark on goods being sold or ser - vices being rendered in the Philippines; • receipts or invoices of sales of goods or services rendered or other similar evidence of use, showing that the goods and services covered by the mark are available in the Philippines; • copies of contracts for services showing the use of the mark; or
• such other evidence of a similar nature that the IPOPHL may determine as being acceptable. 2.5 Notices and Symbols Symbols such as ®, TM, SM or their equivalents are not required for the use of trade marks in the Philip - pines. However, using a “registered mark” symbol (®) creates a presumption that the infringer was aware of the potential for confusion, which is essential to recover damages in an infringement suit. 2.6 Related Rights There is no definite delineation between the scopes of trade marks and copyrights. What matters is that the requirements for each applicable IP right are fulfilled, even if the same object fulfils multiple criteria. A logo or device, excluding its word elements, if any, can be eligible for copyright and trade mark protection separately. The exclusion of the word elements from copyright, however, avoids issues that may arise when copyrighting a word mark such as a surname. 3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works Copyrightable Works The IP Code provides a non-exhaustive list of literary and artistic works that are protected by copyright from the moment of their creation, including: • books, pamphlets, articles and other writings; • periodicals and newspapers; • lectures, sermons, addresses and dissertations prepared for oral delivery; • letters; • dramatic or dramatico-musical compositions; • choreographic works or entertainment in dumb shows; • musical compositions; • drawings, paintings, architecture, sculptures, engravings and lithography; • models or designs for works of art; • original ornamental designs or models for articles of manufacture;
389 CHAMBERS.COM
Powered by FlippingBook