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After recent legal changes in Mexico to declaration of use requirements, trademark owners should review their portfolios to determine if their rights are affected, says Christian Thomae of Dumont.
As of August 10, 2018, Mexico has reimposed the obligation of filing Declarations of Use (DOU) to preserve trademark rights. This change derived from important amendments to the Law of Industrial Property (LIP) that have brought our system closer to being up to date.
Even though not the topic of this paper, it is important to note that it is now possible to register non-traditional trademarks: sound, scent and holograms, as well as certification marks and trade dress. Acquired distinctiveness/secondary meaning is now recognised; letters of consent are expressly accepted, exclusively regarding confusingly similar trademarks.
However, one change which might not be as well received by many trademark holders concerns new requirements to preserve rights by incorporating the need to file a DOU at two points during the life of a trademark: within three months following its third anniversary, and another at the time of renewal.
"What will happen to a trademark registration if a DOU is not filed? The trademark will be automatically cancelled, making it necessary to re-file for the same."
According to the LIP and the Regulations to the Law (RLIP), declarations of real and effective use need to be filed for the specific goods/services to which the trademark is being applied or will otherwise be cancelled, which poses several questions. When exactly do trademark holders need to file a DOU for national and international registrations? What happens to trademarks originally registered to protect class headings? Is evidence of use required? Which trademarks need to file a DOU? What will happen to a registration if a DOU is not filed? What will be the scope of protection of a trademark upon filing a DOU? What will be the impact on costs for maintaining trademarks in Mexico?
Clear answers
The text of articles 128 and 133 of the LIP and the corresponding articles 62bis and 62ter, along with the Third and Fourth transitory sections of the RLIP make it perfectly clear and leave no doubt about the times, ways and criteria applicable to the new use requirements, which provide straightforward answers to some of the questions raised above.
Regarding the third-year DOU, article 128 of the LIP states that the holder must declare actual and effective use of a trademark within the three months following the third year, counted from the date of registration, establishing that the registration will lapse automatically should the declaration not be filed. Article 62bis of the RLIP establishes that the DOU form must indicate the specific goods or services regarding which the DOU is being filed and that protection of the trademark will continue only for those goods or services contained in the DOU, specifying that registrations cancelled for not having filed the DOU will be published in the Gazette. The fourth transitory section of the RLIP establishes that only registrations granted after August 10, 2018 will have to file the third-year DOU.
As for the DOU due at the time of renewal of a registration, article 133 of the LIP establishes that a trademark renewal application shall be filed declaring real and effective use of trademark. Article 62ter of the RLIP states that, apart from declaring real and effective use of the trademark, the goods/services to which the same is applied must be indicated and protection of the registration will continue only for those goods/services contained in the DOU. The Third transitory section of the RLIP establishes that all renewal applications that are filed as from August 10, 2018 must include a DOU.
Confused positions
The answers to the questions above seem therefore to be quite clear in most cases, but not so clear in others. For example, with international registrations designating Mexico, exactly what are the answers from a straightforward interpretation of the amended text?
Is evidence of use required? No evidence of use needs to be submitted along with the DOU.
What will happen to a trademark registration if a DOU is not filed? The trademark will be automatically cancelled, making it necessary to re-file for the same.
What happens with trademarks that were originally registered to protect class headings? Considering an accord issued by the Mexican Institute of Industrial Property (IMPI) in 2012, trademarks designating class headings should be understood as protecting the goods/services that can automatically be implied from the text of the class heading.
Therefore, it is important to review the goods/services for which use exists to determine whether these may be specified in the DOU for a trademark registered with a class heading, or whether re-filing would be advisable.
What will be the scope of protection of a trademark upon filing of the DOU? Protection of the trademark will only be preserved regarding the goods/services included in the DOU, automatically limiting the scope of the same to these and losing protection over the rest, for which re-filing regarding the goods/services left out might be advisable.
Timing
When exactly do trademark holders need to file a DOU regarding their national and international registrations? For the case of national registrations, a DOU must be filed (i) within three months following the third anniversary of a trademark, counted from the date of registration; and (ii) at the time of filing for renewal of the trademark.
In the case of International Registrations designating Mexico, the third-year declaration must be filed within three months following the
third anniversary of the date on which the IMPI granted registration of the designation (contained in the Mexican Certificate issued by the IMPI), which does not necessarily correspond to the date on which the IMPI issues the Statement of Grant of Protection, so caution should be taken in calculating these dates.
The tenth-year DOU will have to be filed with the IMPI—not WIPO—within three months following the notification of renewal by WIPO, which will require a great degree of coordination between rights holders, their representatives in the country of origin and Mexican counsel, so dates are not missed.
In conclusion, it is extremely important to review your/your client’s current Mexican portfolio (both national and international registrations) to determine whether and when any of the DOU mentioned are applicable to your cases, in order to avoid loss of rights. Having a domestic representative appointed in your international registrations would be advisable to aid in these new obligations, considering the DOU has to be signed locally by an authorised representative.
Christian Thomae is senior associate and the head of trademarks at Dumont. He has specialised in IP since 1998 with a special focus on trademarks, but he also covers patents, copyright and other fields of IP and associated litigation. He joined Dumont in May 2016. He can be contacted at: cthomae@dumont.com.mx
trademark, Christian Thomae, Dumont, trademark portfolio, declaration of use requirements, DOU, Law of Industrial Property, distinctiveness
