SECTION 145.

Duration
A certificate of registration shall remain in force for ten (10) years:
Provided, That the registrant shall file a declaration of actual use and
evidence to that effect, or shall show valid reasons based on the
existence of obstacles to such use, as prescribed by the Regulations,
within one (1) year from the fifth anniversary of the date of the
registration of the mark. Otherwise, the mark shall be removed from
the Register by the Office. (Sec. 12, R.A. No. 166a)
SECTION 146.
Renewal
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. The request
shall contain the following indications:
a. An indication that renewal is sought; aisadc
b. The name and address of the registrant or his successor-in-
interest, hereafter referred to as the "right holder";
c. The registration number of the registration concerned;
d. The filing date of the application which resulted in the
registration concerned to be renewed;
e. Where the right holder has a representative, the name and address of
that representative;
f. The names of the recorded goods or services for which the renewal is
requested or the names of the recorded goods or services for which
the renewal is not requested, grouped according to the classes of the
Nice Classification to which that group of goods or services belongs
and presented in the order of the classes of the said Classification; and
g. A signature by the right holder or his representative.
Such request shall be in Filipino or English and may 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.
• If the Office refuses to renew the registration, it shall notify the
registrant of his refusal and the reasons therefore.

• An applicant for renewal not domiciled in the Philippines shall

be subject to and comply with the requirements of this Act.
(Sec. 15, R.A. No. 166a)
 SECTION 147.
Rights Conferred
The owner of a registered mark shall have the exclusive right to prevent
all third parties not having the owner's consent from using in the course of
trade identical or similar signs or containers for goods or services which
are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In
case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
The exclusive right of the owner of a well-known mark defined in Subsection
123.1(e) which is registered in the Philippines, shall extend to goods and
services which are not similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or services and the
owner of the registered mark: Provided further, That the interests of the owner
of the registered mark are likely to be damaged by such use. (n)
 SECTION 148.
Use of Indications by Third Parties for
Purposes Other than those for which
the Mark is Used.
Registration of the mark shall not confer on the registered owner the right
to preclude third parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact indications concerning the
kind, quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services: Provided, That such
use is confined to the purposes of mere identification or information and
cannot mislead the public as to the source of the goods or services. (n)
 SECTION 149.
Assignment and Transfer of
Application and Registration.
An application for registration of a mark, or its
registration, may be assigned or transferred with or
without the transfer of the business using the mark. (n)
Such assignment or transfer shall, however, be null and
void if it is liable to mislead the public, particularly as
regards the nature, source, manufacturing process,
characteristics, or suitability for their purpose, of the
goods or services to which the mark is applied.
The assignment of the application for registration of a
mark, or of its registration, shall be in writing and
require the signatures of the contracting parties.
Transfers by mergers or other forms of succession may
be made by any document supporting such transfer.
Assignments and transfers of registrations of marks shall be
recorded at the Office on payment of the prescribed fee;
assignment and transfers of applications for registration
shall, on payment of the same fee, be provisionally
recorded, and the mark, when registered, shall be in the
name of the assignee or transferee.
Assignments and transfers shall have no
effect against third parties until they are
recorded at the Office. (Sec. 31, R.A. No.
166a)
 SECTION 150.
License Contracts.
Any license contract concerning the registration of a mark, or
an application therefor, shall provide for effective control by
the licensor of the quality of the goods or services of the
licensee in connection with which the mark is used. If the
license contract does not provide for such quality control, or if
such quality control is not effectively carried out, the license
contract shall not be valid.
A license contract shall be submitted to the Office which shall
keep its contents confidential but shall record it and publish a
reference thereto. A license contract shall have no effect
against third parties until such recording is effected. The
Regulations shall fix the procedure for the recording of the
license contract. (n)
 SECTION 151.
Cancellation.
A petition to cancel a registration of a mark under this
Act may be filed with the Bureau of Legal Affairs by
any person who believes that he is or will be damaged
by the registration of a mark under this Act as follows:
a. Within five (5) years from the date of the registration of the mark under
this Act.
b. At any time, if the registered mark becomes the generic name for the goods
or services, or a portion thereof, for which it is registered, or has been
abandoned, or its registration was obtained fraudulently or contrary to the
provisions of this Act, or if the registered mark is being used by, or with
the permission of, the registrant so as to misrepresent the source of the
goods or services on or in connection with which the mark is used.
c. At any time, if the registered owner of the mark
without legitimate reason fails to use the mark within
the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an
uninterrupted period of three (3) years or longer.
Notwithstanding the foregoing provisions, the court or the administrative agency vested
with jurisdiction to hear and adjudicate any action to enforce the rights to a registered
mark shall likewise exercise jurisdiction to determine whether the registration of said
mark may be cancelled in accordance with this Act. The filing of a suit to enforce the
registered mark with the proper court or agency shall exclude any other court or agency
from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On
the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that must be resolved before an action to
enforce the rights to same registered mark may be decided. (Sec. 17, R.A. No. 166a)
 SECTION 152.
Non-use of a Mark When
Excused.
Non-use of a mark may be excused if caused by
circumstances arising independently of the will of
the trademark owner. Lack of funds shall not
excuse non-use of a mark.
The use of the mark in a form different from the
form in which it is registered, which does not alter
its distinctive character, shall not be ground for
cancellation or removal of the mark and shall not
diminish the protection granted to the mark.
The use of a mark in connection with one or more of
the goods or services belonging to the class in
respect of which the mark is registered shall prevent
its cancellation or removal in respect of all other
goods or services of the same class. Cd
The use of a mark by a company related with the registrant or
applicant shall inure to the latter's benefit, and such use shall not affect
the validity of such mark or of its registration: Provided, That such
mark is not used in such manner as to deceive the public. If use of a
mark by a person is controlled by the registrant or applicant with
respect to the nature and quality of the goods or services, such use
shall inure to the benefit of the registrant or applicant. (n)
 SECTION 153.
Requirements of Petition;
Notice and Hearing
Insofar as applicable, the petition for cancellation
shall be in the same form as that provided in Section
134 hereof, and notice and hearing shall be as
provided in Section 135 hereof.
 SECTION 154.
Cancellation of Registration
If the Bureau of Legal Affairs finds that a case for cancellation has
been made out, it shall order the cancellation of the registration. When
the order or judgment becomes final, any right conferred by such
registration upon the registrant or any person in interest of record shall
terminate. Notice of cancellation shall be published in the IPO
Gazette. (Sec. 19, R.A. No. 166a)
 SECTION 155.
Remedies; Infringement.
Any person who shall, without the consent of the owner of the registered mark:

• Use in commerce any reproduction, counterfeit, copy, or colorable imitation

of a registered mark or the same container or a dominant feature thereof in
connection with the sale, offering for sale, distribution, advertising of any
goods or services including other preparatory steps necessary to carry out the
sale of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive; or
Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used in commerce
upon or in connection with the sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the
remedies hereinafter set forth: Provided, That the infringement takes place at the moment any
of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether
there is actual sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)
 SECTION 156.
Actions, and Damages and
Injunction for Infringement.
The owner of a registered mark may recover damages from any person who infringes his
rights, and the measure of the damages suffered shall be either the reasonable profit
which the complaining party would have made, had the defendant not infringed his
rights, or the profit which the defendant actually made out of the infringement, or in the
event such measure of damages cannot be readily ascertained with reasonable certainty,
then the court may award as damages a reasonable percentage based upon the amount of
gross sales of the defendant or the value of the services in connection with which the
mark or trade name was used in the infringement of the rights of the complaining party.
(Sec. 23, first par., R.A. No. 166a)
• On application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing
sales. (n)
• In cases where actual intent to mislead the public or to defraud the
complainant is shown, in the discretion of the court, the damages may
be doubled. (Sec. 23, first par., R.A. No. 166)
• The complainant, upon proper showing, may also be granted injunction.
(Sec. 23, second par., R.A. No. 166a)
 SECTION 157.
Power of Court to Order
Infringing Material Destroyed.
In any action arising under this Act, in which a violation of any right of the owner
of the registered mark is established, the court may order that goods found to be
infringing be, without compensation of any sort, disposed of outside the channels of
commerce in such a manner as to avoid any harm caused to the right holder, or
destroyed; and all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the registered mark or
trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all
plates, molds, matrices and other means of making the same, shall be delivered up
and destroyed.
In regard to counterfeit goods, the simple removal of
the trademark affixed shall not be sufficient other than
in exceptional cases which shall be determined by the
Regulations, to permit the release of the goods into
the channels of commerce. (Sec. 24, R.A. No. 166a)