Law & Practice

MEXICO: Trademarks’ ‘New’ Declarations of Effective and Real Use

Published: October 6, 2021

Marcela Bolland

Marcela Bolland Uhthoff, Gomez Vega & Uhthoff, S.C. Mexico City, Mexico

Paulina Luis-Castillo Uhthoff, Gomez Vega & Uhthoff, S.C. Mexico City, Mexico

Verifier

Arturo Ishbak Gonzalez The Lego Group Mexico City, Mexico Legislation and Regulation Committee—Latin America & Caribbean Subcommittee

To avoid unused marks clogging Mexico’s trademark register, a declaration of effective and real use (DoU) requirement was reintroduced into the Mexican legal framework on August 10, 2018. From that date, owners of Mexican trademark registrations were expected to file the DoU to maintain their registrations. The Federal Law for the Protection of Industrial Property (LFPPI) enacted on November 5, 2020, has maintained the DoU requirement and clarified the filing dates, which are coming up soon for many trademark owners.

According to the LFPPI, a DoU must be filed within three months after the third anniversary for trademark registrations granted on or after August 10, 2018, which is November 10, 2021. For trademark registrations granted before August 10, 2018, a DoU must be filed at the renewal date. Otherwise, the trademarks will be canceled.

For International Registrations (IRs), the DoU must be filed within three months after the date on which the World Intellectual Property Organization (WIPO) notifies the Mexican Institute of Industrial Property (IMPI) of the renewal, but only if the renewal date matches the national registration originating from the IR.  If it is a subsequent designation (and the renewal date and national registration are different), the DoU does not need to be filed, unless the national registration that derives from it has been in force for at least three years.

Complications arise when trademarks are not in use because of circumstances outside the owner’s control—for instance, a delay in the issuance of a permit from another governmental authority, which might be the case of any pharmaceutical product. The law does not take such scenarios into account, which may result in trademark owners losing rights unintentionally. This situation is not helped by the fact that the IMPI tends to have a narrow criterion when it comes to these cases.

The fact that trademark owners would be forced to lose their registration due to circumstances outside their control contradicts Article 235 of the LFPPI, which establishes that, in non-use cancellation actions, the trademark owner is not compelled to use the mark if there have been circumstances arising independently of its will. This matter could arguably be avoided if Article 235 of the LFPPI was extended for the DoU.

Author’s Insight

Despite legislators’ efforts to provide a positive solution to the problem of unused marks clogging Mexico’s trademark register, in practical terms, the DoU not only represents an extra burden for current trademark holders with regard to maintenance actions and costs, it but could also lead to disputes. As this is new territory for the Mexican legal system, many of these disputes will likely end up in the courts.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2021 International Trademark Association

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