It is well settled that the Philippine trademark system follows the first-to-file principle. However, what is often overlooked is that obtaining a trademark registration is not the culmination of trademark protection, but only the beginning. Trademark rights are not acquired once and retained in perpetuity – they must be used and preserved through continued compliance with the requirements of the law. In particular, failure to comply with post-registration maintenance requirements, such as the timely filing of the declaration of actual use (DAU), may have consequences extending far beyond the loss of the registration itself. It results not only in the removal of the trademark from the Register but also in the loss of the registrant’s ability to enforce or rely upon that registration in pending proceedings.

This principle was recently reaffirmed by the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL) in UE Manila Hiyas ng Silangan Sorority, Inc. v. BES-HNS Foundation, Inc. (Appeal No. 14-2023-0047, June 25, 2026), where an opposition was dismissed because the opposer’s registration, which was the basis for the opposition, had been removed from the Trademark Register during the pendency of the appeal.

The Hiyas ng Silangan decision

The Hiyas ng Silangan case arose from an application to register the above composite mark  for Class 45 services relating to fraternity and sorority organizations in the name of UE Manila Hiyas ng Silangan Sorority (the applicant). Hiyas ng Silangan is Pearl of the Orient in English. The application was opposed by BES-HNS Foundation, Inc. (the opposer), which claimed ownership of the registered mark BES-HNS under Reg. No. 4-2019-003696, and asserted that the dominant element “HNS” was confusingly similar to the applicant's mark. The parties actually belonged to the same sorority until it was disbanded when the faculty adviser died, and fraternities and sororities were banned as policy of the university due to hazing incidents. But the parties went separate ways. The opposer put up a foundation, and the respondent’s members continued with their activities by having social get-togethers or doing charity work, decided to revive the sorority formally. There are actually no laws preventing the establishment of these types of associations, but what has been put in place were anti-hazing laws.

The opposition was sustained by the adjudication officer of the Bureau of Legal Affairs (BLA) recognizing the opposer as the prior owner, user and adopter of “HNS” and holding that based on the dominancy test, the central and prominent feature of the opposer’s mark are the “BES-HNS” and that the applicant appropriated the dominant letters “HNS,” giving rise to a likelihood of confusion. The BLA Director affirmed the ruling, prompting the applicant to elevate the matter to the Office of the Director General.

During the pendency of the appeal, however, the ODG conducted its usual verification of the marks involved in cases appealed to it, and found out that the opposer’s registration with the Bureau of Trademarks (BOT) for the registration of the BES-HNS mark had been removed from the Trademark Register for failure to file the required 5th Year Declarationof Actual Use (DAU). The Bureau of Trademarks issued a formal certification confirming removal of Registration No. 4-2019-003696. This supervening event materially altered the outcome of the case.

Since the opposition was anchored on the opposer’s existing trademark registration, once that registration ceased to exist, the legal basis for opposing the applicant’s mark was likewise extinguished. Consequently, the ODG granted the appeal, reversed the earlier rulings, and allowed the trademark application for  Hiyas ng Silangan to proceed. Essentially, the removal of the opposer’s registration rendered the opposition untenable because the very right being asserted no longer existed.

DAU is more than an administrative requirement

The Hiyas ng Silangan decision reflects the policy underlying Section 124.2 of the IP Code. Unlike jurisdictions where trademark registrations may remain valid despite prolonged non-use, Philippine law requires trademark owners to periodically demonstrate actual commercial use of their marks. The purpose of the DAU requirement is to ensure that the Trademark Register accurately reflects marks that are genuinely in use in commerce. Accordingly, the consequence of failing to file the required DAU is severe – the registration is removed from the Register.

The Birkenstock and Mattel cases

The legal consequences of failing to maintain a trademark registration have been firmly established by the Supreme Court in Birkenstock Orthopaedie GmbH & Co. KG v. Philippine Shoe Expo Marketing Corporation (G.R. No. 194307, Nov 20, 2013) and Mattel, Inc. v. Francisco (G.R. No. 166886, July 30, 2008). Although these cases arose under different factual circumstances, they collectively underscore a fundamental principle of Philippine trademark law: a trademark registration must remain valid and subsisting if it is to continue serving as the basis for asserting or enforcing trademark rights.

In Birkenstock, the Supreme Court categorically held that the failure to file the required declaration of actual use within the prescribed period results in the automatic cancellation of the trademark registration. The court went further by characterizing such failure as tantamount to the abandonment or withdrawal of any right or interest the registrant has over the trademark. Philippine Shoe Expo Marketing Corp.’s prior trademark registration was deemed automatically cancelled for failure to file the required DAU on time.

Complementing this principle is the Supreme Court’s ruling in Mattel. In this case, Mattel sought a ruling on whether a “Barbie” trademark registered for confectionary products by Jimmy Uy was confusingly similar to its own “Barbie” trademark. Given Uy’s admission that he has effectively abandoned or withdrawn any rights or interest in his trademark by his non-filing of the required DAU, there was no more actual controversy, or no useful purpose would have be served in passing upon the merits of the case. It would be unnecessary to rule on the trademark conflict between the parties. 

In Mattel, the court acknowledged that where developments occurring after the commencement of the proceedings affect the continued legal existence of a cited registration, such events cannot simply be disregarded. Consequently, if the legal foundation of a party’s claim disappears while the case remains pending, the tribunal may take judicial notice of such supervening event and dispose of the case accordingly.

The Supreme Court ultimately dismissed the petition for being moot and academic. The case serves as an example of how the court will decide an intellectual property dispute if the underlying trademark application has already been deemed abandoned by operation of law. Once again, the court said“Where the issue has become moot and academic, there is no justiciable controversy, and an adjudication thereof would be of no practical use or value as courts do not sit to adjudicate mere academic questions to satisfy scholarly interest, however intellectually challenging (Republic v. Tan, G.R. No. 145255, March 30, 2004, 426 SCRA 485, 492-493).”

Read together, Birkenstock and Mattel establish a coherent legal framework. Birkenstock defines the substantive consequence of failing to comply with the DAU requirement – the automatic cancellation of the registration and the consequent loss of the registrant’s rights. Mattel, on the other hand, explains the procedural consequence of abandonment/withdrawal of trademark due to non-filing of DAU in pending proceedings, recognizing that the removal of a trademark registration may render the very basis of an opposition or similar action moot.

Practical implications for trademark owners

The UE Manila Hiyas ng Silangan Sorority, Inc. v. BES-HNS Foundation, Inc. decision serves as a reminder that trademark rights require continuous maintenance. A registration that has been removed from the Trademark Register cannot continue to serve as the legal foundation for preventing another party’s application from proceeding to registration.

Read together with Birkenstock Orthopaedie GmbH & Co. KG v. Philippine Shoe Expo Marketing Corporation and Mattel, Inc. v. Francisco, the decision reinforces an important principle of Philippine trademark law: a trademark registration must remain valid and subsisting throughout the proceedings if it is to be successfully invoked as the basis for an opposition or other enforcement action.

Ultimately, maintaining a registration is just as important as obtaining one. Many trademark owners devote significant resources to securing registration but overlook the continuing obligation to use the mark and file DAUs. A registrant who neglects the statutory requirements for maintaining a mark risks losing not only the registration itself but also the ability to invoke it against competitors. Conversely, applicants and practitioners should remain vigilant throughout prosecution and appeal, as supervening events affecting the status of cited registrations may decisively change the outcome of a case.