Maintenance of designations of the Philippines in International Registrations

A recent Information Notice from WIPO has, somewhat belatedly, clarified the maintenance requirements for designations of the Philippines in International Registrations.

Some of you may already be aware of these, some may have anticipated they would have been in place and some of you may have been unaware of these maintenance requirements. When news emerged in May last year that the Philippines were joining the Madrid Protocol there was a complete lack of information concerning their (additional) maintenance requirements and the filing of Declarations of Actual Use (DAUs).

It is effectively the same as national applications filed in the Philippines although take note of the timings.

These DAUs are due at three junctures:

1. Within three years of filing the International Registration (application and registration dates being the same)
or
If the Philippines is subject of a Subsequent Designation within three years of the Subsequent Designation recording date by WIPO.

These DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO), usually for foreigners through a law firm in the Philippines although the WIPO notification also indicates that this can be filed through "the holder’s authorized representative with a local address".

A single six-month Extension of Time can be sought, but likewise these must be requested at the Intellectual Property Office of the Philippines (not WIPO) through a Filipino lawyer (or authorized representative). Please note that an Extension of Time must be explicitly requested; it is not an automatically existing grace period.

2. Between the 5th and 6th anniversary of registration (i.e. local Statement of Grant date) in the Philippines.

Again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).

3. Between the 5th and 6th anniversaries of each renewal of an International Registration. Remember that renewals are filed centrally at WIPO, but, again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).

Let's take a (fictitious) example:

International Registration No. 123098 filed and registered 19 January 2013
Philippines: Subject of Subsequent Designation on 9 May 2013
Intellectual Property Office of the Philippines issues Statement of Grant on 27 February 2014

• First DAU due 9 May 2016 (three years from "date of filing" in the Philippines; six-month extension possible till 9 November 2016)
• Second DAU due 27 February 2019-27 February 2020 (5-6 years following local "registration" in the Philippines)
• Third DAU due 19 January 2028-19 January 2029 (5-6 years following renewal (i.e. on 19 January 2023) of the International Registration)

Trade mark law files within databases will need to be sophisticated to calculate these correctly and vigilance will be important with any docketing/record keeping.

These onerous maintenance requirements may lead many to consider avoiding designating the Philippines within Madrid applications (and file national applications instead). It is a similar consideration when designating the United States, whereby at the outset Madrid applications can be more cost-effective but in the longer term it can represent a false economy when it is not possible, as with national registrations, to combine Use Declarations/Affidavits with renewals because the technical renewal is handled through WIPO.

Madrid membership moving on up

Madrid membership has increased recently with the accession of the Philippines on 25 April 2012. It will be in force from 25 July 2012.

How this will work in practice is not clear to this writer and it may remain to be seen what happens as and when designations of the Philippines start to be requested. The Philippines, somewhat uniquely, has a trade mark law akin to that of the United States; the US took control of the islands in the aftermath of the Spanish-American War.

The trade mark law therefore contains provisions relating to use and it will be interested to see how these will be adapted for Madrid Protocol designations, if at all - there is no indication there will be a need to file anything like a Form MM18 as you must do when designating the United States. I have not been able to locate any amendments to the Intellectual Property Code of the Philippines - and the Philippines is a Common Law country - that reflect its memberships and commitments under the Madrid Protocol. I must say that it seems the Philippines has "sneaked in" without much warning. I'm totally in favour of an increase in Madrid Protocol membership, but a country must be ready (in terms of both legislation and organisational capabilities) or the rights obtained through International Registration could be limited and a country's IP image could suffer.

Filipino accession is part of a commitment from ASEAN member states to accede to the Protocol by 2015. I'm not quite sure this is a realistic timetable. Of the 10 members, the Philippines joins Singapore and Vietnam as members whereas the others require national filings for now.

Indonesia, Malaysia and Thailand - which, along with the previous three countries mentioned, represent the most significant economies of the ASEAN block - will need to ensure they have backlogs of trade mark applications under control. There will be times when they will struggle to meet the 12 or 18-month examination timetable otherwise. Malaysia will require some updating of regulations to reflect its membership.

Brunei's law - drafted along the lines of Singapore - should be largely Madrid compliant with some small amendments. Laos, which pretty much operates a deposit system, should not have any difficulty adopting Madrid although the the internationalisation of the agreement does not meet so well with a country that has often chosen to remain somewhat isolated.

Isolation would be a word used quite freely with respect to Myanmar (Burma). This country is making steps to come out from the cold but Madrid membership by 2015 is likely to be too ambitious, in my view. Myanmar does not currently have a trade mark law and relies on the publication of Cautionary Notices. A new substantive - and Madrid compliant - law may not be a priority to a newly democratic government. On the other hand, if the junta remains in place then they have not previously buckled under international pressure so any leverage put on them to join the Madrid Protocol could have little impact.

Finally, Cambodia has Affidavit maintenance requirements on registrations. Perhaps these would not be requested for Madrid designations, but there is potential for an anomaly that they may wish to rectify before they can accede to the Madrid Protocol.

To go off on one of my typical tangents, I have just learnt that the Philippines have been less keen on accepting a previous Madrid Protocol from 1885.

Outside of ASEAN - much further to the south - noises from New Zealand suggest it is on course to join the Madrid party shortly. Colombia's membership could be in force as early as the end of this year - according to officials at the Colombian IPO, although local attorneys seem to feel Spring 2013 is a more realistic target.

Mexico has also got the ball rolling towards its eventual membership of the Madrid Protocol.

However, I had a discussion during the recent INTA conference with an agent from a smaller jurisdiction in the Americas (which shall remain nameless) and they were quite frank with me. They will fight their government tooth and nail for it not to join the Madrid Protocol. With local powerhouses like Mexico and possibly Brazil coming on board, coupled with pressure from the US and EU in particular, I wonder if they will be able to stop the Madrid juggernaut driving through their jurisdictions as it gathers more and more momentum. After a couple of years of stagnation with few new joiners, perhaps this momentum is about to build up.