Mastering the renewals merry-go-round
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Amendments to Mexico’s IP laws came into force on August 10, 2018, and made declarations of use mandatory upon renewing all trademark registrations.
The main reason behind this specific amendment was to give more importance to the use of trademarks in our country, considering that traditional trademarks according to their nature are words, names, symbols, devices or any combination thereof, which must be available for consumers to acquire goods or services offered by companies or natural persons.
In other words, a trademark is filed when a person has a bona fide intention to use in commerce a mark that identifies and distinguishes specific goods or services, including unique qualities, from those sold by third parties.
In this regard, it is the Paris Convention that provides that for contracting parties, the use of a trademark may only be compulsory after a reasonable period. Before the 2018 amendment to our law, however, the same did not indicate clear consequences to the lack of use of a trademark, but only if a third party initiated legal actions on grounds of non-use.
Specifically, article 237 of the Federal Law for the Protection of Industrial Property provides that when proceeding with the renewal of a national trademark registration or an international registration, the owner of the same must declare that the trademark is in actual and effective use in our country, pointing out the specific goods or services for which the same is applied and paying the corresponding government fees.
No evidence of use would need to be exhibited alongside the declaration of use, but still the scope of protection of the registration will be limited and continue only for those goods or services for which use is declared.
When the declaration of use is not filed, the Mexican Institute of Industrial Property (IMPI) will require the owner to complete the same within a two-month period and in case the owner does not comply with this requirement within the given period, the registration will expire without the need of further action by the trademark authority.
However, it is important to note that the IMPI does not often issue this kind of requirements. Therefore, for the specific case of international registrations the Madrid System legal framework does not impose any obligation to demonstrate the use of a trademark to guarantee its validity, and while it is true that the same must be renewed before the World Intellectual Property Organization (WIPO), this renewal however would not suffice to maintain these cases in force in some contracting parties.
“Most trademarks for which owners lack interest, or those for which real and effective use may not be truly declared, may no longer continue in force.” - Miguel García Talamantes, Becerril, Coca & Becerril
This means that for international registrations that have designated Mexico, the registration obtained for these cases might be at risk if registrants do not timely comply with the use requirements provided by our law, for simply lacking knowledge of Mexican practice under which declarations of use upon renewals are now mandatory.
Moreover, the timeframe for filing the declaration of use of a national trademark registration at the time of its renewal will be six months prior to the renewal date or within the next six-month grace period. The timeframe for filing the said declaration of use of an international registration at the time of the renewal will be within the next three months after the renewal notice is made by WIPO, non-extendable.
This is applicable only for trademark registrations that have been granted for at least three years in Mexico at the time of the renewal notice made by WIPO’s International Bureau (publication in the Official Gazette).
Therefore, owners of international registrations must be aware that while it is true that these may be managed through a centralised system, however, the renewal of an international registration filed before WIPO would not be sufficient to maintain the international registration in force in Mexico. So, it is important to consider that the Federal Law for the Protection of Industrial Property provides additional declaration of use requirements that must be complied by owners to avoid a possible expiration of Mexican designations resulting from international registrations.
In view of the above, we would suggest owners of international registrations which have designated Mexico as a contracting party to appoint local legal representatives in order to timely file this declaration of use and avoid the expiration of the relevant registration simply for the lack of the filing of this validity requirement.
Accordingly, it is undeniable that after the amendment to our law most trademarks for which owners lack interest, or those for which real and effective use may not be truly declared, may no longer continue in force. This will allow other trademarks for which bona fide use is intended to be registered, while unused trademarks will be removed from active records, and in the near future the number of trademarks cases will be consistent to the economic activities and commerce in our country.
Miguel García Talamantes is a trademark attorney at Becerril, Coca & Becerril. He can be contacted at: firstname.lastname@example.org
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Becerril, Coca & Becerril, renewals, trademark registration, goods and services, Paris Convention, industrial property, IMPI, declaration of use, WIPO