Renewing a trademark is crucial to maintaining your exclusive rights under the Intellectual Property Code (IP Code).1 Registration alone does not guarantee indefinite protection—trademarks must be renewed periodically to remain valid and enforceable. Failure to renew can result in losing your rights, leaving your brand vulnerable to infringement.
This article outlines the trademark renewal process in the Philippines and provides practical tips to protect your brand.
Trademark Renewal: Importance and Nature
Section 146 of the IP Code expressly provides for the importance of trademark renewal.2 To protect your brand in the long run, your trademark should be renewed according to the periods provided by law. A valid trademark also strengthens your brand’s market presence and can build stronger customer trust.
Last year, the Intellectual Property Office of the Philippines (IPOPHL) issued a statement on Eat Bulaga’s renewal which highlights the nature of trademark renewal, to wit:
“The renewal process strictly observes an ex-parte nature prescribed by Republic Act 8293 or the Intellectual Property Code. Under the law, requests for renewal should be granted primarily if the registrant can prove the actual and continuous use of the mark.”
The Trademark Renewal Process
Below are the 3 key steps to a trademark renewal process:
1. Know the necessary periods for renewal filing
A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. Such request shall be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed.3
At this point, you have to also prepare the information and documents needed for renewal, such as, but not limited to:
- Title of the mark and its registration number
- Date of registration
- Date of filing the original application
2. File a response
If the applicant receives an Official Action on Renewal from IPOPHL, they must respond within two (2) months from the date it was mailed. If IPOPHL raises no objections, a Notice of Issuance will be released. Check out the IPOPHL website to learn more.
3. Pay the fees and wait for issuance
Upon receipt of the Notice of Issuance, registrants should pay the legal fees required. The IPOPHL provides for trademark-related fees that you need to take into account in the renewal process. Additionally, the IPOPHL will issue a Renewal Certificate of Registration in three (3) to four (4) months from the date the fees were paid.
For professional guidance in renewing your trademark, consider engaging the services of an accredited trademark lawyer.
Conclusion
By understanding the renewal process, you ensure the consistent use of your trademark and uphold your intellectual property rights. Proactively managing renewals not only secures your mark but also strengthens your brand’s reputation.
To know more about trademark renewal, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §1 (January 1, 1998) [hereinafter Intellectual Property Code of the Philippines]
2 Intellectual Property Code of the Philippines §146
3 Id
