The Mexican industrial property law which entered into force on August 10, 2018 establishes the need to submit a declaration of use of the Mexican trademark in order to maintain these rights in this territory.
In this context, an official form should be filed, directly with the Mexican Trademark Office, by which the trademark owner declares to use his trademark effectively and effectively.
This obligation will occur in two stages:
a) When filing a national or international trademark renewal application designating Mexico:
When filing a request for renewal of rights for a new period of 10 years, the trademark holder must comply with the obligation to provide this declaration of actual and effective use.
With regard to international registrations designating Mexico, rights holders must declare the actual and effective use of the mark directly to the Mexican Trademark Office within three months of the renewal notice issued by the International Bureau of WIPO.
This obligation will apply to all renewal requests filed from August 10, 2018.
b) Within three months of the date of the third anniversary of the registration of the national or international mark:
This obligation will apply to all national or international trademarks registered as of August 10, 2018, even if their respective applications were submitted before that date.
In these cases, the rights holder must declare the actual and effective use within three months of the third anniversary of national registration.
It is specified that this declaration form must indicate the products and / or services whose use is real and effective, no evidence is to be provided.
Protection resulting from the registration of the mark will continue for products and / or services only in respect of which the actual and effective use has been declared.
The declaration of actual and effective use of the mark must be presented by the holder's authorized representative and payment of an official fee is required.
► In case of failure to communicate this declaration within the time limit, the Mexican Trademark Office will automatically declare the forfeiture of the trademark.
Do not hesitate to contact your usual Council for any further information.
