Declarations of use in Mexico – Implementation, Advantages & Risks
On August 10, 2018 an amendment to the Industrial Property Law entered into force in Mexico, which established an obligation for holders of trade marks and trade name registrations to file a declaration of use in relation to the products and/or services for which protection was registered.
The amended article that regulates this new requirement reads as follows:
“Article 128.- The trademark shall be used in the national territory, as it was registered or with modifications that do not alter its distinctive character.
The owner of a trademark shall declare before the Institute, together with the payment of the corresponding fee, the real and effective use of the trademark.
Said declaration must be filed during the following three months, counted from the third year after the registration has been granted. If the owner does not declare the use, the registration will lapse as of right”.
As of 2021, right holders should file declarations of use for registrations granted as of August 10, 2018. The holder has a period of 3 months to make this declaration, with no possibility of extension.
If a declaration of use is not filed, the registration will lapse. This declaration of use not only applies to national registrations requested via the national route, but also applies to International Registrations that have designated Mexico and have been granted as of August 10, 2018.
How and what should be presented in the declaration of use?
The declaration must be made only with respect to the specific products or services in which the trade mark or trade name is used, so that the registration will only preserve the protection for which the trade mark is actually used and will lose its validity with respect to those in which the holder has not used the sign.
It is important to note the following nuance regarding the declarations to be filed.
1º The declaration in Mexico is filed based on the principle of good faith, i.e., it is not necessary to file evidence before the IMPI to prove the use of the trade mark or trade name, it is enough that the holder indicates the products or services in which it uses the sign, so that the IMPI does not issue objections in this regard.
Unlike legislation in the United States, which provides that at the time of filing declarations of use, evidence of real and effective use must be submitted, the evidential burden under Mexican law is lower.
Therefore, our recommendation in this regard is to:
- Review the trade mark portfolios in Mexico in terms of possible expirations of declarations of use to be filed.
- Review whether there is real and effective use of all the products and services in the classes of registration.
- Collect evidence of use. Despite the fact that Mexican law regarding the declaration is based on a good faith principle, it is no less true that before a possible application for a declaration of expiration by a third party seeking to obtain an identical or similar trade mark registration, it will be necessary to have such evidence to prove that the trade mark is indeed in use and, therefore, the declaration previously made is truthful.
This change has meant a fundamental modification in the Mexican industrial property system, harmonising the importance of the use of trade marks with the prevailing regulations in Europe and the United States, although with important nuances that must be taken into account.