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.

On-line Design applications

Following last week's announcement from WIPO on their improved on-line filing facility for Hague International Design applications, this week I will look at the on-line filing abilities of some other Offices.

OHIM provides a platform for filing Registered Community Design applications on-line. This is well used and the ease of uploading representations makes the applications significantly easier.

Compare this to the United Kingdom where paper forms are still required and it can be a bit fiddly collating all the representations into order. The same is the case in Germany, Benelux and Portugal, as examples.

OHIM's Cooperation Fund should help all countries within the EU introduce on-line facilities for filing design applications in the future. Among its initiatives, many national trade mark applications in EU member states can be filed on-line. These are scheduled to be extended to design applications in due course.

Outside the European Union, Switzerland has not yet developed an on-line process although it does accept applications via e-mail. However, Switzerland can be included within a Hague application.

Further afield, Canada and Australia offer on-line tools for which they should be commended.

It is understandable that systems for on-line design applications need to be robust in order to cope with a large number of representations as attachments. This makes them less easy to implement.

In the UK at least, most national designs are filed by local, often individual, designers directly (bigger firms and those professionally represented tend to take the European or International route). Their voice is perhaps less heard than professional IP organisations. This factor may also contribute towards why the UK IPO may not have considered it a priority to implement an on-line filing system for designs. As the UK looks to revamp its design legislation, the practical improvement of developing an on-line tool may also be carried out ahead of any support from OHIM's Cooperation Fund..

New on-line filing tool for Hague Design applications

WIPO have announced the introduction for a new on-line filing system for Hague International Design applications.

It will now be possible to upload multiple design representations at the same time, which may speed up the preparation of applications. A fee calculator will be built into the tool to help with the accurate calculation of fees due (which can be complicated under Hague). Furthermore, it will be possible to pay for applications using a credit card. This will be very useful for filers that do not hold a deposit account with WIPO; previously if you wanted to make payment by credit card then you needed to wait for a WIPO irregularity notice and then make payment through their E-Payment tool.

WIPO have prepared some step-by-step tutorials for the filing of Hague applications including the creation of a user account that is necessary.

With the accession of the United States and the powerhouse economies of the Far East to Hague expected in the not-too-distant future, WIPO are preparing themselves well to be more efficient ready for an increase in the number of filings.