How to prevent trademark rights lapsing under new law

The new Federal Law on the Protection of Industrial Property, which came into force on 5 November 2020, includes the obligation to submit a declaration of actual and effective use for trademark registrations. This must be filed directly at the Mexican Institute of Industrial Property (IMPI), at two different times. 

  • For trademarks granted as of 10 August 2018, either nationally or filed through WIPO, the declaration of use must be filed within three months of the third anniversary of the grant date in Mexico. This means that the period for filing the first declarations of use under these provisions goes from 10 August 2021 – 10 November 2021.
  • Upon submitting a renewal petition for national registrations, and in case of international registrations within the three-month period following the date of the renewal notification made by WIPO to IMPI.

Additionally, concerning international registrations, there is an exception for filing the declaration of use when the renewal happens to be before the third anniversary of the registration of the national application, in which case the declaration will be filed as mentioned above, and with the subsequent renewals.

The declaration of use is a declaration under oath, submitted in an official form. It is not necessary to file any evidence of use, but only to specify the goods or services for which the use of the trademark is being declared. The scope of protection will only continue for the goods or services mentioned in the declaration of use form, without the possibility of expanding the original description of goods or services. The remaining goods will be deleted and no longer protected by the corresponding registration.

In relation to the three-year declaration of use, failure to comply with this requirement is that the trademark registration will be considered lapsed by IMPI on an ex-officio basis. As of now it is not clear whether any annotations will be made in the IMPI’s database, or how long the publication of lapsed trademarks in the Official Gazette will take for the knowledge of the owner and third parties.

Special care should be taken with international registrations designating Mexico, since no information regarding the grant date is provided in the statement of grant of protection issued by IMPI and sent to the holders by WIPO, and the issuance date of such documents does not necessarily match the actual grant of registration.

Also, it is important to consider that the Mexican legal system does not allow multi-class applications, thus, it is likely that if there is a provisional refusal towards one of the designated classes, not all of them will have the same grant date, even when they derive from the same international registration.

In this regard, it is important to point out that the grant date for Mexican registrations is only included in the registration certificate issued by IMPI, in the IMPI’s database, and in the Official Gazette, thus, it is advisable to verify this information through any of these means in order to keep track of deadlines, and to avoid losing exclusive rights in such registrations.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

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