Over the years, the Mexican Laws on Industrial Property have undergone various changes, adapting to the needs that have arisen in industrial and commercial matters of individuals and / or companies who look for obtaining legal protection of their interests and rights of what distinguishes and supports the prestige in the quality of their products and / or services compared to those of the commercial competitors, their trademarks.
While it is true that the way of protecting Industrial Property rights in Mexico has been changing (for good), so is the way of maintaining said protection in force, the last, considering that previously, once a trademark registration certificate was granted and issued by the Mexican Institute of Industrial Property to cover certain products and / or services, it was enough for the holders of said trademark registration to maintain the legal protection of their trademark rights by only timely filing the corresponding renewal petition before said Institute; however, derived from the amendment to the Industrial Property Law that entered into force on August 10, 2018 in Mexico, additional obligations were established for the holders of trademark registrations in order to maintain the validity of their IP rights, such as it is the declaration of real and effective use of the trademarks in the country.
The obligation to file said declaration of use of trademarks is now compulsory to be filed at two different times during the validity of a trademark registration, first, on the third anniversary of the trademark registration granting date, and then at the time of its renewal petition filing at the Mexican Institute of Industrial Property, pointing out that said obligation of filing the declaration of use will only affect trademark and/ or slogan registrations granted as for August 10, 2018, affecting both distinctive signs, the ones nationally filed at the Mexican Institute of Industrial Property, as well as those distinctive signs derived from International Registrations filed under the Madrid Protocol designating our country; highlighting that trademark registrations granted before August 10, 2018 will only have to file the Declaration of use at the moment of its renewal petition filing.
In accordance with the provisions of the Federal Law for the Protection of Industrial Property:
"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 actual and effective use, indicating the specific products or services to which it applies, accompanying the payment of the corresponding fee.
The statement will be presented to the Institute during the three subsequent months, counted from the third year after the registration has been granted.
The scope of the protection of the registry will continue only in those products or services on which the use has been declared. If the holder does not declare the use, the registration will expire by right, without requiring a declaration by the Institute.”
Therefore, it is of utmost importance to preserve the IP rights granted for trademarks and/or slogans conferred by the Mexican Institute of Industrial Property by timely filing the declaration of the actual and effective use of such marks and/or slogans in the country of the products and / or services protected by said registration in order to avoid their expiration.
It is important to comment that it is not necessary to submit any proof of use, since this is only a Declaration whose main purpose is to avoid protection-mark registrations that are not in real and effective use, or to limit the scope of protection of the goods/services protected by the registration to those which are in real and effective use.
In conclusion, the three-year declaration of use will only apply for those cases granted in Mexico (either by local applications or international registrations) on or after August 10, 2018. Please note that the deadline to file the three-year declarations of use will be counted from the third anniversary up to three months after that date.
In addition, it will be necessary to also file a declaration of use along with the renewal petitions for local and international registrations.
For trademark registrations granted before August 10, 2018, the declaration of actual and effective use must be filed only every ten years, accompanying the renewal petition.
Taking the above into consideration, we strongly recommend to all trademark and slogan registration holders to carefully review the date in which its registration certificates were granted by the Mexican Institute of Industrial Property, in order to timely fulfill this new obligation avoiding any risk of loosing its protected IP rights, considering that ignoring the law does not exempt its compliance.