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Keeping Your Mark Alive in Mexico: Use It or Lose It

Keeping Your Mark Alive in Mexico: Use It or Lose It

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So, you’ve secured that coveted trademark registration in Mexico?  Fantastic. That’s a huge win for your brand’s international strategy. But you will have to take extra steps to keep your trademark registration alive in Mexico: the government isn’t content with just paperwork. They want to see your brand in action. Think of your registration as a license to operate, and the price of keeping that license is actual, effective use.

In a move that puts the responsibility squarely on the owner, Mexican IP law emphasizes continuous commercial use of your mark. If you let your brand sit on the shelf for three consecutive years without any activity, you’re risking cancellation. That’s right: non-use can lead to the outright loss of your registration, or even partial cancellation if you’re only using the mark for some of the goods and services you registered it for. The message is clear: once registered, make sure your brand is genuinely working for all the products and services you want to protect within Mexican territory.

This need for genuine use is formalized through a critical piece of paperwork: the Declaration of True and Effective Use. This isn’t a suggestion; it’s a non-negotiable requirement that acts as a check-in with the Mexican Institute of Industrial Property (IMPI).

Here is what you need to know about this mandatory filing:

  • First, for new trademarks granted after August 10, 2018, you must file a Declaration of Use within three months following the third anniversary of the registration date. Missing this deadline is severe—it leads directly to the cancellation of your entire registration. You can’t just shrug this one off.
  • Second, the requirement comes up again every time you renew your trademark, which happens every ten years. The Declaration of Use must be submitted as part of the official renewal application.

The Declaration itself is essentially a sworn statement. It must be signed by the trademark owner or their attorney, and it formally declares that “the mark is in use within the Mexican territory on the following products/services…” You must precisely list the International Class number and the specific goods or services for which your mark is genuinely being used. While this is a time to potentially limit or eliminate goods you are no longer using the mark on, remember that you cannot use this opportunity to add new items to your list. Importantly, you generally don’t need to submit mountains of proof of use unless the IMPI specifically asks for it.

If your trademark protection in Mexico comes through the Madrid System, you have an extra step to remember. The Declaration of Use for the Mexican designation must be filed separately from your normal Madrid System maintenance. It’s an easy detail to miss, but essential to keeping your protection active in Mexico.

Ultimately, maintaining a trademark in Mexico boils down to two simple rules: use your mark consistently and never miss your Declaration of Use filing deadlines. If you keep these two points in mind, your brand’s protection in Mexico will stay strong.

Mexico approves participation in the Hague Agreement, dealing with Industrial Models and Designs

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On January 17, 2020 The Mexican Senate decreed the approval of of the Geneva Act of the Hague Agreement dealing with the International Registration of Industrial Models and Designs. The approval is for an Only Article that states:

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México begins to accept non-traditional trademarks

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The reform of August 10 2018 to the Mexican Industrial Property Law substantially changed the Mexican trademark landscape. Among the most relevant changes brought by this legislative reform, particularly the acceptance on behalf of the Mexican Institute of Industrial Property (IMPI) of non-conventional trademark applications – such as smell and sound trademarks – positions México today at the forefront of innovation. Read More here.

Madrid Protocol (IR) Trademarks – Registered Attorney

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More and more applicants are indicating Mexico as a designated state for their International Registrations under the Madrid Protocol. However, while the process may be harmonized under WIPO, there are still quirks in the Mexican system that applicants should know about. This is what you need to know:

  • You will only receive notification of your first provisional refusal via WIPO. Except for
    provisional refusals, as of August 2018 all notifications are made via the official gazette as per the IP Law amendments. This means that any notification from Mexican IP Institute (IMPI), such as third party oppositions, will only by issued via gazette.
  • Your trademark registration may be granted, but you must use it to keep it. The amended IP Law indicates that a Declaration of Use must be submitted three years after grant. If not, the registration will automatically be abandoned. Evidence is not required, but a sworn declaration must be submitted.
  • Interested in enforcement? Make sure Mexican Customs knows how to contact you. Mexican Customs actively reviews incoming shipments and occasionally flags those that they deem suspicious. Customs then contacts the registered representative to determine whether these goods should be detained or can be forwarded to their final address.
  • Don’t let your trademark be attacked without the opportunity to fight back. Third parties routinely target registered trademarks that are cited against their new applications. Court notifications are typically delivered in person to the Mexican address of the registered representative. Failure to have a representative of Recortd can result in a trademark registration being lost because no one submitted a defense.


All the above issues can be solved by recording an Attorney of Record at the IMPI. Therefore, if you are thinking about designating Mexico for your International Registration, be sure to let your Mexican Attorney know so that we can help you keep an eye on your trademarks.

If you have any questions, please contact us.

The importance of having an attorney on File for Mexican Trademarks

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Mexican Trademark Law does not require trademarks, either applications or registrations, to have an attorney on file. However, this is not recommended as notifications regarding Mexican trademark applications or registrations will be published via the official gazette, as per the amended IP Law that came into effect in August, 2018. In many cases, neither the owner nor the World Industrial Property Organization (WIPO) will be notified directly; the latter applies for International Registrations via de Madrid Protocol.

Due to the fact that some types of notifications require responses within days, such as notices from the customs office, it is recommended that all Mexican trademark applications/registrations have an attorney on file and that said attorney monitor the official gazette for notifications in relation to these cases. The process of adding an attorney on file to a Mexican trademark can take several business days, not taking into account the receipt of an original Power of Attorney document from a client.

We recommend ensuring that all Mexican trademarks and registrations in a client’s portfolio have an attorney on file, even if an application has been granted without objection, in order to avoid any loss of rights due to a missed notification.

If you have any questions, please contact us.

Declaration of True and Effective Use for Mexican Trademarks

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Mexican trademarks registered after August 10, 2018

In view of the amendments to Mexican IP Law, which came into effect on August 10,
2018, all trademark Registrations granted after this date must now submit a Declaration of True and Effective Use three years after Registration is granted in order to maintain protection of the trademark. Please note that this applies to all Registrations granted after this date, as opposed to Registrations filed after this date

Renewals

As per the same amendments, a Declaration of True and Effective Use must be included with all trademark renewal applications. The Declaration of true and effective use format is included within IMPI’s official renewal form.

For both cases, new registrations and renewals, the declaration of true and effective use form must be signed either by the trademark owner or the attorney on file on the owner’s behalf, and includes the trademark owner’s declaration that “the mark is in use within the Mexican territory on the following products/services…”. Also, the International Class number and all goods/services for which the mark is effectively being used must be declared. Please note that while goods may be limited (or eliminated), it is not possible to add goods to this list. Additional proof of use is not required unless requested by the IMPI.

Please contact us if you have any questions.

Nice Classification, 11th Edition

As of 2017, the 11th edition of the Nice Classification will come into force in Mexico. The effective date will be January 1, 2017.

The Nice Classification (NCL) is an international classification of goods and services applied for the registration of trademarks and service marks. It was established by an Agreement concluded at a Diplomatic Conference held in Nice in 1957: the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Please visit the WIPO website for the full listing of goods and services.

Amendments to Mexican IP Law – Aug. 2018

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Non-Traditional Trademarks, Declarations of Use, Acquired
Distinctiveness and Coexistence Agreements, Certification Trademarks

This year has brought many changes to Mexican IP Law, including a first round of amendments that came into effect on April 27, 2018, as previously reported, and a second round coming into effect on August 10, 2018. This second round of amendments is focused mainly on the trademark chapter of the national IP Law. The final touches are still being prepared, as new fees have recently been published and we still await the publication of specific filing requirements and applications forms.

The first round of amendments included changes to the term of design patents (up to 25 years), a reduction in the basic filing fee for all patent applications but with an excess page fee after 30 pages, and the inclusion of geographical indications alongside the existing definition of appellation of origin, allowing existing foreign indications to be recognized. For more details on these changes, please contact us or refer to our communications of April 10 and April 30, 2018.

The second round of amendments seeks to align and harmonize Mexican IP Law with global practices, and includes the recognition of non-traditional marks, changes to the trademark opposition process, formally recognizing acquired distinctiveness for descriptive marks, formally recognizing coexistence agreements and consent letters, and new requirements for showing use of trademark as well as other amendments directed to the enforcement of trademark rights.

Some of the specific amendments are:

  • Article 87 of the IP Law was amended to specify that any person, either an individual or legal entity, could make use of a mark; this is in contrast to previous language that stated that only service providers or business persons had this right.
  • Article 88 was amended to define a trademark as “any sign which is perceptible to the senses and which is susceptible of being represented in a manner that is capable of clearly and precisely distinguishing goods or services in industry or commerce from one and other”, allowing the recognition of non-traditional trademarks.
  • Amendments to the trademark chapter defines specific requirements for Collective Marks, which include of Certification Marks, and the alignment of Geographic Indications for more comprehensive protection for associations, legal entities and final producers and service providers that commercialize or manufacture products or provide services from a specific region or area, based on the specific identifiable and distinct characteristics from these regions.
  • Mexican Law will now accept descriptive trademarks, if it can be shown that the trademark has acquired distinctiveness through use.
  • If a trademark opposition is submitted, the applicant will have the opportunity to submit counterarguments within a two day period.
  • The amended Law includes the requirement for a “Declaration of Use”, which carries an official fee of approximately US$60.
    • Trademarks granted under the amended Law will be required to show “true and effective use” three years after the grant date, by means of (at least) a declaration of use, otherwise the registration will be cancelled.
    • Trademark renewals will be required to show “true and effective use” by means of (at least) a declaration of use.
  • All notifications with respect to trademark matters will now be served to applicants via the Official Gazette of the Mexican IP Institute.
  • Specific provisions have been included that establish that trademark applications submitted in bad faith are prohibited.
  • Specific provisions have been included that allow confusingly similar trademarks to coexist if written consent of coexistence is provided by the owner of the cited mark.

We note that these amendments will apply to all applications submitted after August 10, 2018; applications submitted prior to this date will be examined based on the current legislation. However, all granted registrations will be treated under the terms of the amended Law (e.g., with respect to the requirements for the declaration of use). Finally, we note that these amendments apply to all applications, whether submitted through the national offices or whether as a national designation through the Madrid Protocol.

As with the implementation of any amendments, some issues will arise immediately through the examination process and other issues will arise within several years, e.g. with the renewal of a recently granted registration which will not be required to show use within three years but will require a declaration of use upon renewal in ten years. Regardless of this, we shall keep you informed and provide anticipated information so that you and your clients can make the appropriate decisions with respect to trademark portfolios in Mexico.

Should you require further or more specific information regarding any of these matters, please let us know and we will gladly assist you.

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