Use Requirement in Certain Madrid System Members
March 20, 2016
The Madrid System legal framework does not impose any obligation to demonstrate the use of a trademark to ensure its continued validity. However, users of the Madrid System should take note of such a requirement in the USA, the Philippines and Cambodia, where respective national legislation mandates procedures for the holder to declare actual use or non-use throughout the lifecycle of the trademark. As such, holders of an international registration designating any of these three countries will need to submit declarations directly to each of the Offices concerned, taking into account differing requirements, procedures and time limits in each country.
What is required?
- USA:Between the fifth and sixth anniversary of the date of grant of protection by the United States Patent and Trademark Office (USPTO), the holder of an international registration designating the USA needs submit to the USPTO a first affidavit affirming continued use in commerce. A further affidavit should be filed prior to every ten-year anniversary of the grant of protection by the USPTO. To assist trademark holders, USPTO is offering the possibility to register to receive courtesy email reminders ahead of the due date of a required affidavit of continued use. For more information concerning this requirement in the USA and the reminder service, please see Information Notices 16/2010 and No. 9/2016.
- Philippines: A first declaration must be presented to the IP Office of the Philippines within the first three years after the date of the international registration or the date of the subsequent designation of the Philippines. A second declaration must be submitted five years after the date of grant of protection in the Philippines, and again every five years after each renewal of the international registration. Additional details are available in Information Notice 18/2013.
- Cambodia: A first declaration of actual use or non-use of the mark must be presented to the Cambodia IP Office five years after the date of granting protection in Cambodia, and again every five years after the date of renewal of the international registration. Please refer to Information Notice 11/2016 for more information.
- Contact Madrid Legal Division.