By Marco Tena
The Mexican Institute of Industrial Property (IMPI) has informed the International Bureau of the World Intellectual Property Organization (WIPO) that holders of international registrations under the Madrid Protocol, with protection extended to Mexico, must file a declaration of real and effective use to maintain the validity of their rights in the country.
This obligation is established in accordance with the Federal Law for the Protection of Industrial Property and failure to comply with it may result in the automatic expiration of the registration in Mexico. The application must be filed by a representative in Mexico.
Derived from the 2018 reform to the Industrial Property Law (in force at the time of its enactment) (hereinafter, the “Reform”), it was established as a requirement for holders of trademark registrations, including international ones, to declare the effective and real use of the trademark at two times: i) upon reaching 3 years of age, and ii) at the time of filing a renewal.
In this regard, as a result of the Reform, all holders of international registrations acquired the obligation to file a declaration of real and effective use of the trademark before the IMPI at the time of renewal.
This is especially relevant as international registrations in Mexico are reaching their 10th anniversary, and many are up for renewal.
In turn, for international trademark registrations registered with IMPI after August 10, 2018, there are two moments in which the declaration of real and effective use must be filed:
- Three years after the grant of protection in Mexico, filed within three months after the third anniversary of the date of grant; and
- within three months after the renewal of the international registration was published in the Official Gazette of the World Intellectual Property Office.
As a consequence of non-compliance, in the first case, if the owner does not file the declaration, the trademark lapses automatically, without the need for an express resolution.
In the second case, if the declaration is not filed, the IMPI will require the holder, through the Gazette of the Mexican Institute of Industrial Property and with the reference of the national file, to correct the omission within a period of two months.
In both cases, IMPI will notify the owners of the invalidity of the registration in accordance with Rule 19 of the Madrid Protocol Regulations through the Official Gazette of the World Intellectual Property Office.
If you have any doubt regarding this matter, the Intellectual and Industrial Property team of Vega, Guerrero & Asociados is ready to serve you.
