The Philippines is one of the few jurisdictions which, in order to maintain a trademark registration or to renew the same, requires use and the corresponding submission of declaration of use and proof or evidence of use. Other jurisdictions which still have similar requirements of use include the United States, Mexico and Cambodia.
The trademark law in the Philippines requires a registrant to periodically submit to the Intellectual Property Office of the Philippines (IPOPHL) a Declaration of Actual Use (DAU) of the registered trademark along with proof and evidence of such use. The requirement applies to marks filed directly before the IPOPHL and also to those which were filed through the Madrid route designating the Philippines in the international registration. A registrant’s use of a trademark in commerce is proved by the submission of the DAU which is basically an affidavit outlining the information on the registered trademark, the goods and services it covers and where the same is actually used, and the address or establishments where such goods or services may be found.
Over a year ago, the Supreme Court had an occasion to issue a ruling discussing what constitutes “use” which the trademark law requires. The case involved an entity engaged in the real estate industry, W Land Holdings, Inc., (W Land) and an international hotel chain owner, Starwood Hotels and Resorts Worldwide Inc., (Starwood). In contention was the registered word mark “W”, which was registered in the name of Starwood covering services under international classes 43 and 44.
In the said case, W Land filed a petition to cancel Starwood’s trademark registration of the “W” mark on the ground of non-use. W Land contends that Starwood has failed to use its mark in the Philippines because it has no hotel or establishment in the Philippines rendering the services covered by its registration. For its part, Starwood argued that it conducts hotel and leisure business both directly and indirectly through subsidiaries and franchisees, and operates interactive websites for its W Hotels in order to accommodate its potential clients worldwide including those in the Philippines.
To cut the long story short, the Supreme Court decided in favor of Starwood and declared that it has used its “W” mark sufficient enough to maintain its registration. In so ruling, the Supreme Court declared that the use of a registered mark representing the owner’s goods or services by means of an interactive website may constitute proof of actual use that is sufficient to maintain the registration of the same. However, to be an acceptable actual use, the decision stated that the use must be bona fide or of the genuine kind. Mere exhibition of the goods or services in the internet without more is not enough to constitute actual use. It must be shown that the trademark owner has actually transacted, or at the very least intentionally targeted customers of a particular jurisdiction in order to be considered as having used the mark in the ordinary course of his trade in that country. A showing of actual commercial link to the country is imperative.
With the Supreme Court’s ruling, it has been clearly established that a trademark owner need not be physically present in the Philippines to prove its genuine use of the registered mark and in turn, maintain the same.
More importantly, the decision, though in passing, highlighted the role of technology particularly the internet in terms of trademark use. From the words of the Supreme Court, the internet has turned the world into one vast marketplace, the owner of a registered mark is clearly entitled to generate and further strengthen his commercial goodwill by actively marketing and commercially transacting his wares or services throughout multiple platforms on the internet. The Court likewise stated that the mark displayed over internet websites no less serves its functions of indicating the goods or services’ origin and symbolizing the owner’s goodwill than a mark displayed in the physical market. Therefore, there is no less premium to recognize actual use of marks through websites than their actual use through traditional means.
To foreign trademark owners and foreign practitioners, the decision makes trademark registration and maintenance in the Philippines less restrictive. Hopefully, the days where foreign trademark owners see Philippine-registered trademarks as mere deadweights because it is almost virtually impossible for non-residents to maintain them, are over. Here on, the decision makes online trading and online commerce viable avenues to put a Philippine-registered trademark to use and maintain the same. So long as the actual use is genuine or bona fide, the burdensome nature of maintaining Philippine-registered trademarks will become a thing of the past.
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