On August 10, 2018 the Industrial Property Law underwent one of the most significant and extensive reforms since the 1994 legislation reforms. Within the scope of the 2018 reforms, some already existing legal concepts were amended, and others which had previously been in our legislation many years ago were adopted once again. One of the implemented concepts was the “Real and Effective Declaration of Use for a Trademark”, whose main goal is to avoid that those trademarks which have already been granted registration by the Mexican Trademark Office (IMPI for its initials in Spanish) and are not being used by their owners, block or act as an obstacle to those trademark registration applications which are indeed being used in the market in Mexico but which are not duly registered yet, or even those which are probably not being used, but already count with marketing strategies to be launched into the Mexican market and wish to obtain a trademark registration from the Mexican PTO.
Article 128 of the Industrial Property Law underwent reform with the end goal of establishing that the owner of a trademark must undertake a Real and Effective Declaration of Use for a Trademark before the Mexican Trademark Office (IMPI). This declaration must be filed a single time, within the three month period after the third year anniversary date of the registration granting.
As an example, should “PPM” apply for a trademark on June 15, 2019 and IMPI grant the registration on January 10, 2020, then PPM would have to file the three year Declaration of Use in the three month window of time between January 20, 2023 and April 20, 2023.
In other words, IMPI grants trademark registration owners three years to undertake the necessary preparations and launch their trademark into the market. On the other hand, should this not be achieved, a path should be forged for other trademarks seeking registration to actually be used.
Now then, two procedures which must take place exist for undertaking the declaration of use:
- Declaration of Use for a Trademark Registration which must be renewed:
Those national and international trademark registrations which were granted prior to the August 10, 2018 reforms and which are in the renewal period, will declare use simultaneously with the renewal procedure.
- Declaration of Use after the third year of granting a Trademark Registration:
As mentioned above, national and international trademark registrations which were granted post August 10, 2018 will declare use within the three month period after the third year anniversary date of the registration granting.
In case the international trademark registrations were processed according to the Madrid Protocol, the Declaration of Use must be filed within the three months after the date on which WIPO notifies IMPI of the international registration renewal, as long as the granting of protection in Mexico has already met the three year term at the time of said renewal.
On the other hand, it is important to highlight that in practice, the protection scope for national and international trademark registrations which declare use, will only cover those products or services which are specifically mentioned, so that protection is lost for the remaining products or services which were initially applied for in the registration application, but for which use was not declared.
Are there negative consequences to not undertaking Real and Effective Declaration of Use for my Trademark?
The answer is yes, as the third chapter in Article 152 of the Industrial Property Law establishes that should the Real and Effective Declaration of Use for a Trademark not be undertaken, the trademark registration will expire and the right to its exclusive use will be lost (remember, this can only be obtained by means of registration at IMPI) so that it will be necessary to restart the registration procedure in order to recover the rights.
In conclusion, what IMPI is seeking by re- implementing this legal concept, is to shift the responsibility to the trademark registration owner by having them undertake Real and Effective Declaration of Use for their trademark, in order to avoid trademark registrations which are not is use and which block registration or granting to another party. Additionally, it seeks to restrict trademark protection solely to goods and services which are actually being used in the class they were applied for, with the objective of granting protection only to registrations which despite being in the same classes, may be approved by IMPI with the goal of broadening the availability of goods and services in the Mexican market and encourage both national as well as foreign entrepreneur investment in Mexico.
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