Currently in Mexico there are many trademarks in full force that have been registered for many years. Through time, they have been used with certain modifications that have not changed the essence of their distinctive character in accordance with Article 128 of the Mexican Law of Industrial Property, which literally states that: "trademarks must be used as they were registered or with modifications that do not change their distinctive character".
Although there are trademarks that have been slightly modified -without altering their distinctive character-, there are many other trademarks that are not being used in relation to the goods/services to which the protection has been granted, and which holders only pay the official fees for the renewal every 10 years.
This behavior was preventing the registration of new trademarks whose goods/services are actually in the market, therefore directly affecting healthy competition within the Mexican commerce.
Currently, there are new amendments to the Mexican IP Law, which were published in the Official Gazette on May 18, 2018, same that will enter in force on next August 10, this year.
The amendments contemplate the addition of the following paragraphs to Article 128:
"The holder of a trademark must declare the actual and effective use of the trademark before the Mexican Institute of Industrial Property, accompanying the payment of the corresponding rate.
Said declaration must be submitted during the following three months, counted from the third year after the registration was granted.
If the owner does not declare the use, the registration will lapse".
The above translates into the verification of the effective use of trademarks in relation to the corresponding protected goods/services with the purpose of cancelling certain trademarks, that have been registered and that are not in use, before the expiration of the ten-year term of trademark registrations in Mexico.
In this sense, the owner must file a Declaration of Use under oath before the Mexican Institute of Industrial Property within the first three months after three years of the granting date of the trademark registration, in order to keep it in force, of course, with the corresponding payment of the official fees. It is important to bear in mind that it is only a declaration and it will not be necessary to file any evidence of use.
Therefore, it is the obligation of the holder to use the trademark. The consequence of not doing so is the cancellation of the registration grounded on the non-compliance of Article 128 herein analyzed.
Furthermore, under the concept that a trademark should not be renewed if it is not in use, the amendments also contemplate the filing of the Declaration of Use at the time of the renewal of the trademark, as follows:
"Article 133.- The renewal of the registration of a trademark must be requested by the owner accompanying the payment of the corresponding tariff, declaring the actual and effective use of the trademark.
The application will be submitted within the six months prior to the expiration of its validity. However, the Institute will process those applications that are filed within a period of six months after the termination of the term.
Upon expiration of this period without the application for renewal being filed, the registration will lapse. (...)"
From the above, it can be noted that trademark renewal procedure in Mexico will follow the same deadlines that it have followed so far. This is, that the renewal application may be submitted within the six months prior to the expiration of the trademark and also within the six months after the expiration of the same. However, from now on the renewal application of national trademarks will be filed along with the Declaration of Use and the corresponding payments of both concepts.
Finally, it is very important to mention that the Regulations of the amended IP Law have not yet been published by the Authority. However, derived from several meetings, we do know that these amendments will apply only for national trademarks granted after August 10, 2018, while for Madrid Protocol Applications, the amendments will apply only for those which become national trademarks granted in Mexico after August 10, 2018.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.