Trademark Renewals
The obligation to prove use of a trademark has been abrogated from the Mexican Law on Intellectual Property.
The renewal term for registrations has been extended to 10 years from the filing date and the obligation to prove use has been replaced by a simple sworn declaration stating that the mark is being used and that use of the mark has not been suspended for more than three consecutive years. This declaration must accompany the renewal petition. No actual evidence of use must be submitted to the authorities with the renewal petition.
Non-use of a trademark may be permitted if good reasons are given to the Mexican Trademark Office. Reasons might include a prohibition on importation of the goods covered or force majeure causes, such as natural disasters or unavoidable accidents.
Trademarks may be used in different forms from the one registered, provided that the modifications do not change the essential characteristics of the trademark.
Licences for the use of trademarks must be recorded with the Mexican Trademark Office in order to be enforceable against third parties.
If a trademark registration is not being used or its use has been suspended for three or more years, then a new application should be filed in order to secure continuous protection. This new application must be filed shortly before the end of the expiry of the three-year term of non-use.
If the trademark registration is in use or if use has not been interrupted for periods of more than three consecutive years, there is no need to spend time and money in filing proofs of use every three years since the obligation has been abrogated. In the unlikely event that a third party (which must fully prove its judical interest to the Mexican Trademark Office) applies for a cancellation action against an apparently non-used registration, the proofs of use for the trademark in the possession of the trademark owner must then be filed before the Patent Office in order to stop this cancellation action. This is the only case in which proofs of use, including sales and samples, must be filed.
For further information on this topic please contact Patricia Becerril at Becerril, Coca & Becerril SC by telephone (+525 55 254 0400) or by fax (+525 55 254 5152) or by e-mail ([email protected]).
The materials contained on this web site are for general information purposes only and are subject to the disclaimer.