The provisions of the new Federal Industrial Property Law uphold a new requirement to maintain trademarks in force that was established as a result of an amendment to the previous Mexican Industrial Property Law (IP Law). The Mexican Institute of Industrial Property now requires trademark owners to file a Declaration of Actual and Effective Use (DoU) of their trademarks for the protected goods or services that are actually and successfully being used in Mexico in order to maintain their registrations and keep them in effect (IMPI).
New requirement to maintain the validity of your trademarks in Mexico
The primary objective of this change is to emphasize the importance of trademark use in Mexico.
Article 233 of the amended IP Law stipulates in this regard:
“The trademark must be used in national territory, as it was registered or with modifications that do not alter its distinctive character.
The owner of a trademark must declare its real and effective use, indicating the products or services for which protection applies, accompanying the payment of the corresponding fee.
The statement will be submitted to the Institute during the following three months, counted from the third year after the registration has been granted.
The scope of registration protection will continue only in those products or services on which the user has been declared.
If the owner does not declare the use, the registration will automatically expire, without requiring declaration by the Institute”
The primary objective of this newly introduced requirement is to prevent trademark registrations that are not being used by their holders from hindering the submission of new applications for trademarks that are truly and effectively being used in commerce in Mexico but have not yet been registered.
The Mexican IP Law requires registrants to make a DoU at two different times:
Within the next three months, beginning with the third anniversary of their grant date. This rule will apply to any trademarks granted after August 10, 2018, even if the application was filed before that date. This rule will also apply to national trademark designations that are linked to international registrations. The trademark owners must specify the products or services for which use of the trademark is being declared in the “Declaration of Actual and Effective Use.” The scope of trademark registration protection remains in effect for the goods or services for which real and effective usage has been declared. Furthermore, in both circumstances, the right-holder will be required to pay the corresponding fee.
Every ten years, the “Declaration of Actual and Effective Use” shall also be filed with IMPI, together with the Renewal petition for any trademarks registered before or after the Law amendment:
- For national trademark registrations, the registrant should file the “Declaration of Actual and Effective Use” together with the Renewal petition.
- For International Registrations using the Madrid protocol renewed under Article 7 of the Madrid Protocol, the trademark owner should declare the actual and effective use of the trademark directly to IMPI within the three months following the renewal notice of the International Registration made by the International Bureau of WIPO.
The protection will be lost for the remaining goods or services that were initially covered by the registration but for which use was not declared with the Declaration of Actual and Effective Use because the scope of protection for national and international trademark registrations that declare use will only cover those goods or services that are precisely declared.
The result of failing to comply with the Declaration of Use in either of the aforementioned instances is that the trademark’s protection will immediately lapse and that IMPI will ex officio consider it as having expired.
Owners of international registrations with Mexico listed as a contracting party is advised to appoint local legal representatives in order to timely file the required Declaration of Actual and Effective Use and prevent the relevant registration from expiring for lack of compliance.
The trademarks that were registered before August 10, 2018, are not required to submit this Declaration of Actual and Effective Use because they are still valid for the full term of 10 years, during which time the authority protects them. If renewal petitions are submitted, this term may be extended for an additional equal period.
It is filed in good faith according to the Declaration of Actual and Effective Use in Mexico. There is no need to provide any proof of use with the Mexican Institute of Industrial Property (IMPI), as doing so is not required when registering a trademark. For all situations, the IMPI has made available formal documents that must be completed by submitting the precise goods or services that the trademark owner certifies are actually and effectively being used in Mexico in connection with the registered trademark. To put it another way, the Mexican IP Law requires a declaration in the proper format, stating under oath the precise goods or services for which the name is in use and for which the trademark owner verifies real and effective use in Mexico, but it cannot include new goods or services. A new application should be made with the IMPI if the trademark is being used in Mexico in connection with new goods or services.
Therefore, it is crucial to try to define what is truly meant by “real and effective use of a trademark” in Mexico.
In terms of Article 235 of the IP Law, “the use of a mark must be made by its owner or by its authorized user. If a trademark is not used for three consecutive years in the products or services for which it was registered, its registration will lapse or, it can take place the partial lapse in connection with the products or services that are not in use, unless its owner or authorized user who has been granted a license has used it during the three consecutive years immediately prior of the filing of an eventual administrative cancellation action, or that there are circumstances arising independently of the will of the trademark owner that constitute an obstacle to the use of the mark, such as import restrictions or any other governmental requirements applicable to the goods or services to which the mark is protected.”
Use must obviously indicate the availability of the goods or services on the Mexican market in a real and appropriate manner. In other words, the goods or services that are the subject of a trademark registration must at least be made available to Mexican customers in quantities and in a manner that corresponds to their cultural norms and commercial practices. The actual sale of a good or service to Mexican customers is often what is meant by the use of a trademark.
It’s also a good idea to have proof of the use of the trademark on hand in case it is challenged by a third party, such as contracts, advertisements, invoices, publications, brochures, catalogs, or any other marketing document, and always keeping an eye on your trademark registrations in Mexico to be aware of the maintenance deadlines, such as the “Declaration of Actual and Effective Use,” and reviewing the real and effective use of the trademarks.
To encourage the active use of registered trademarks and to avoid control over registrations that are not being utilized by their owners, the Declaration of Actual and Effective Use has been included in Mexican law. The Mexican Industrial Property System has undergone significant change as a result of this new requirement, which complements the significance of trademark usage with international practices.
The Declarations of Actual and Effective Use of a Trademark in Mexico have been extensively studied and discussed; yet, it is important to keep this subject in mind to be aware of the maintenance needs for all of your client’s trademarks.
You can see a list of Mexico IP Firms here