Declaration of Use of Registered Trademarks in Mexico

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Declaration of Use of Registered Trademarks in Mexico

Declaration of Use of Registered Trademarks in Mexico

August 20, 2021

ATTENTION! Registered trademarks will lapse if their Declaration of Use is not filed at the 3-year term from their grant, or along with their renewal.

Derived from an amendment to the former Industrial Property Law, and based on the provisions of the current Federal Law for the Protection of Industrial Property that entered into force on November 5, 2020, the owners of trademarks registered in Mexico as of August 10, 2018, must file a Declaration of Use stating the goods or services in respect of which their trademarks have been used in the Mexican market. Such Declaration of Use must be filed before the Mexican Institute of Industrial Property ("IMPI") without submitting any proof of use, and failing to do so would cause the automatic lapse of the registration.

In summary, the Declaration of Use of a trademark registered in Mexico must be filed with the IMPI in two cases:

1) 3 years after the trademark registration has been granted.

The owners of trademarks registered as of August 10, 2018, must file their Declaration of Use before the IMPI on the 3rd year after their grant. This applies to those trademarks that have been registered for 3 years by August 10, 2021.

The same applies to international trademark registrations ("IRs"), protected through the World Intellectual Property Organization ("WIPO") by virtue of the Madrid Protocol, for which the 3-year period must be calculated as of the grant of the corresponding national designation.

The Law establishes a period of 3 months from the completion of the 3-year term of registration, to file the Declaration of Use of trademarks registered in Mexico and of national designations of IRs.

2) At the time of filing the trademark renewal.

The Declaration of Use must also be filed with the IMPI every 10 years, simultaneously with the renewal application of trademarks registered before or after the law reform became effective.

The 10-year validity period will be calculated from the granting date of trademarks filed on or after November 5, 2020, and from the filing date for those applied for registration prior to such date.

Concerning IRs that have designated Mexico as a country of interest, the Declaration of Use must be filed with the IMPI within 3 months from the date that WIPO has published the IR renewal acceptance in its electronic International Registration Gazette.

Key Notes:

Trademark protection will be retained solely over the goods or services in respect of which use is declared in the Mexican territory. If the trademark has not been used in Mexico, it is recommended exploring the possibility of filing a new application for its registration.
The Declaration of Use must be filed with the IMPI directly by the trademark owner or by an authorized representative, with a local address for serving process.
Regarding the proof of use, although it is not necessary submitting it with the IMPI, we recommend preserving the same at least from the date of first use in Mexico, or during the last 3 years, to have suitable elements of defense against potential legal actions from third interested parties.

We encourage you to review if any of your trademarks registered in Mexico, or those owned by your clients, are due for renewal or if 3 years have elapsed since they were granted, in order to assist you with the timely filing of their Declaration of Use with the IMPI.

At Dentons we are at your service if you have any questions on this subject.