After August 10, 2018, according to Mexico’s national Intellectual property law and the USMCA, a declaration of use must now be filed for all trademark registrations within three months of the third anniversary of the registration date.
Background information
On August 10, 2018, the Mexican Government had had one of the most significant reforms in its legal system since the 1994 legislation reforms. The reforms targeted many aspects, including the amendments of some of the existing provisions and even adopting some forgotten concepts and include in the current legal system.
One of the implemented concepts was the “Real and Effective Declaration of Use for a Trademark.”
This concept’s main purpose is to clarify the trademarks which have been effectively used and which are only registered for bad-faith intentions. Specifically, the trademarks which have been granted registration by the Mexican Trademark Office (IMPI for its initials in Spanish) but are intended to block or act as an obstacle to those trademark registration applications which are indeed being effectively used in Mexico but haven’t or unable to register because of those bad-faith registrations.
According to article 128 of the Industrial Property Law, the owner of a trademark in Mexico must undertake a Real and Effective Declaration of Use for a Trademark before the Mexican Trademark Office (IMPI). This declaration must be filed a single time within the three-month period after the third-anniversary date of the granting of the registration.
Specifically, the two procedures involving in the undertaking of the declaration of use are:
- Declaration of Use before the third year of granting a Trademark Registration: Those national and international trademark registrations which were granted prior to the August 10, 2018 reforms and which are in the renewal period, will declare the effective use simultaneously with the renewal procedure.
- Declaration of Use after the third year of granting a Trademark Registration: Those national and international trademark registrations which were granted after the August 10, 2018 reforms will declare the effective use within the three-month period after the third anniversary date of the grating of the registration.
If the international trademark registrations were filed through the Madrid System, the Declaration of Use must be filed within the three-month period after the date on which WIPO notifies IMPI of the international registration renewal, as long as the granting of protection in Mexico has already met the three-year term at the time of said renewal.
Note:
The declaration of use for both national and international trademark registrations only covers the products or services which are used in practice. That means the protection for the products or services which was initially applied in the application for the trademark registration in Mexico but not actually use in practice is lost.
New regulations on the declaration of effective use in Mexico
The new laws which were enacted on Nov. 5, 2020, by the Mexican Government are set to align Mexico’s national intellectual property laws with the new intellectual property standards prescribed in the United States-Mexico-Canada Agreement (USMCA) – a free trade agreement between Canada, Mexico, and the United States replacing North American Free Trade Agreement (NAFTA).
As mentioned above with the new Declaration of Use after the third year of granting a Trademark Registration, from now on, the owner of every trademark registered after Aug. 10, 2018, must submit a declaration of use within three months of the third anniversary of the registration date.
To clarify, for example, if a trademark is registered on February 5, 2021, a declaration of use must be filed by the owner before May 5, 2024.
The owner isn’t required to submit any evidence. The statement, declaration of use is simply a statement in good faith, by means of which the trademark owner declares the use of the mark in Mexico, on all or several goods/ services covered by the registration.
However, it should be noted that failing to declare this statement of effective use in the appropriate manner and timeframe will cause the trademark registration(s) to lapse automatically and the owner might be considered to have waived and renounced its trademark.
This strict change in Mexico’s IP law will eliminate unused marks or marks filed in bad faith. Specifically, it will also ensure a trademark owner in Mexico is using the trademark for commercial purposes, not just registering a trademark for place-holding or to prevent, blackmail others to register their trademark.
You can see a list of Mexico IP firms here.