A petition to cancel is filed with the Bureau of Legal Affairs of the Intellectual Property Office by any person who believes he is or will be damaged by the registration. Within five years of the registration date you may raise any ground. After that window closes, cancellation is still available at any time on specific grounds: the mark has become the generic name for the goods or services, it has been abandoned, the registration was obtained fraudulently or contrary to the Intellectual Property Code, or the mark is being used so as to misrepresent the source of the goods or services. Separately, a registration may be cancelled at any time if the owner, without legitimate reason, has failed to use the mark in the Philippines for an uninterrupted period of three years or longer.
Opposition and cancellation are two different remedies at two different moments, and confusing them costs businesses their window. Opposition is what you file after a mark is published but before it registers — a thirty-day window under the Intellectual Property Code. Cancellation is what remains once the certificate has already issued. This article is about the second.
Who May File, and Where
A petition to cancel the registration of a mark may be filed with the Bureau of Legal Affairs of the Intellectual Property Office by any person who believes that he is or will be damaged by the registration.
That standard is broader than ownership. You do not need a registration of your own. A business already using a confusingly similar name in the same market, a company blocked from registering because of the mark, or a trader whose ordinary descriptive vocabulary has been fenced off can all meet it. But it is not a public-interest action either: you must be able to articulate the damage.
The Five-Year Window
The Code splits the timing into two regimes.
Within five years from the date of registration, a petition may be brought on any available ground. This is the widest opportunity you will get, and it is the one most often missed — typically because the aggrieved business only notices the registration when it tries to register its own mark years later.
The practical lesson is unglamorous: watch the register. A watch service or a periodic search of the office’s database is far cheaper than the alternative once the five years lapse.
The Grounds Available At Any Time
After five years, cancellation is still possible, but only on specific grounds. A petition may be filed at any time where:
- the registered mark has become the generic name for the goods or services, or a portion of them, for which it is registered;
- the mark has been abandoned;
- the registration was obtained fraudulently or contrary to the provisions of the Intellectual Property Code; or
- the 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 it is used.
Two refinements on the generic-name ground are worth knowing because they defeat lazy arguments in both directions.
First, cancellation can be partial. If the mark has become generic for fewer than all the goods or services it covers, a petition may be filed to cancel the registration only for those goods or services.
Second, the Code supplies the test. A registered mark is not deemed generic merely because it is also used as the name of, or to identify, a unique product or service. What governs is the primary significance of the mark to the relevant public — not purchaser motivation. In other words, the question is what the word signals to the buying public: a source, or a category of thing.
Cancellation for Non-Use
This is the ground that most often clears a blocked register, and it stands on its own footing.
A petition may be filed at any time if the registered owner, without legitimate reason, fails to use the mark in the Philippines, or to cause it to be used in the Philippines by virtue of a licence, during an uninterrupted period of three years or longer.
The Code then tells you when non-use is excused, and the list is narrow:
- Non-use may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds is expressly not an excuse.
- Using the mark in a form different from the registered form is not a ground for cancellation or removal, provided the difference does not alter the mark’s distinctive character — and it does not diminish the protection granted.
- Use in connection with one or more of the goods or services belonging to a class prevents cancellation or removal in respect of all other goods or services of that same class. A registrant using the mark on one item in a class is not vulnerable across the whole class.
- Use by a related company inures to the registrant’s benefit and does not affect the validity of the mark or its registration, provided the mark is not used so as to deceive the public. Where the registrant controls the nature and quality of the goods or services, that controlled use likewise inures to his benefit.
Before building a non-use case, check those four provisions against the facts. Many apparently dormant marks are being used lawfully through a licensee, an affiliate, or on a single product within a broad class.
Removal for Failure to File the Declaration of Actual Use
Related to non-use, but a different mechanism, is the maintenance requirement built into the term of registration.
A certificate of registration remains in force for ten years, provided the registrant files a declaration of actual use with evidence — or shows valid reasons based on the existence of obstacles to use, as prescribed by the Regulations — within one year from the fifth anniversary of the date of registration. Otherwise the mark shall be removed from the register by the Office. Registrations may be renewed for further ten-year periods on payment of the prescribed fee and filing of a request.
The difference matters procedurally: removal for failure to file the declaration is something the Office does, not something you petition for. Before spending on a cancellation action, it is worth checking whether the mark is simply due to fall off the register on its own.
Cancellation and Court Cases Running Together
The Code addresses what happens when the same dispute reaches both the Office and a court.
A court or administrative agency with jurisdiction to hear an action to enforce rights in a registered mark also has jurisdiction to determine whether the registration may be cancelled. Filing a suit to enforce the mark with the proper court or agency excludes any other court or agency from assuming jurisdiction over a later-filed cancellation petition.
But the reverse does not hold. The Code states plainly that the earlier filing of a cancellation petition with the Bureau of Legal Affairs is not a prejudicial question that must be resolved before an action to enforce the same registered mark may be decided. A pending cancellation petition, on its own, will not freeze an infringement suit against you.
Practical Takeaways
- Diarise the five-year date from registration. Inside it, your grounds are widest.
- Outside it, identify which specific ground fits — generic, abandoned, fraudulently obtained, misrepresenting source, or three years of non-use. A general complaint that the mark should never have registered is not enough.
- For a non-use case, rule out licensed use, related-company use, use in a varied form, and use on any item within the class before filing.
- Check whether the declaration of actual use was filed. The register may clear itself.
- If you are already being sued for infringement, understand that filing a cancellation petition will not by itself suspend that case.
Filing fees and the detailed procedure for inter partes cases are set by the Intellectual Property Office’s own regulations and schedule of fees, which are revised from time to time; check the current schedule with the Office rather than relying on figures quoted in older material. This article is general legal information and not advice on any specific mark.
Frequently Asked Questions
How long do I have to cancel a registered trademark? Within five years from the date of registration you may petition on any ground. After that, cancellation is available at any time only on specific grounds: the mark has become generic, it has been abandoned, the registration was obtained fraudulently or contrary to the Intellectual Property Code, or it is used so as to misrepresent the source of the goods or services.
Can I cancel a trademark that the owner is not using? Yes. A petition may be filed at any time if the registered owner, without legitimate reason, fails to use the mark in the Philippines or have it used under a licence for an uninterrupted period of three years or longer. Lack of funds is expressly not a legitimate excuse for non-use.
Do I need my own registered trademark to file a cancellation petition? No. The petition may be filed by any person who believes that he is or will be damaged by the registration. You do not need a registration of your own, but you do need to be able to show how the registration damages you.
Will filing a cancellation petition stop an infringement case against me? No. The Intellectual Property Code states that the earlier filing of a cancellation petition with the Bureau of Legal Affairs does not constitute a prejudicial question that must be resolved before an action to enforce the rights to the same registered mark may be decided.
This commentary is for general informational purposes only and does not constitute legal advice. For guidance specific to your situation, please consult a licensed attorney.
If you have questions about your rights or options under Philippine law, our firm is available to assist. You may reach us via Viber or WhatsApp, call us at 0995 433 5550, or send an email to vivasnobles@gmail.com. We look forward to hearing from you.