To maintain your trademark in Mexico, you must file a declaration of use in the third year after granting and renewal.
This obligation applies to national and international trademarks designating Mexico.
When registering a trademark, you usually have a bona fide intention to use it. But as trademark registrations continue to increase, it is becoming more challenging to find an available spot in the registry. Countries have taken a series of measures to keep their registry as clean as possible. In particular, Mexico has opted to request a use statement to keep the trademark alive. A requirement of use it's a novel concept in Latin America, but it is becoming popular. In 2018 Argentina also started requiring a declaration of use at the fifth year after granting.
In August 2018, a series of changes entered into force in the Mexico trademarks regime, including the new one we are discussing. Before this change, the only moment when a trademark holder was required to show evidence of use as if a third party started a legal procedure for cancellation of the trademark for lack of use.
What are the trademark use requirements in Mexico?
You are required to make a declaration of use at two different moments, after the third year of granting and at each renewal. It is important to note that these obligations are the same for trademarks registered initially in Mexico and for international trademarks extended to Mexico using the WIPO Madrid system.
When should I file a declaration of use for new trademarks registered in Mexico?
The owner must file a declaration of use in the third year of the trademark registration date. Be aware that before the 2018 law changes, the registration date was the application date; nowadays, it is the granting date. From the third anniversary of granting, you have just three months to file the declaration of use.
For international registrations using the WIPO Madrid System, the three-year period starts after the trademark has been accepted in the Mexican registry. Then, you have the same three months from the third anniversary to comply.
When to file a declaration of use when renewing the trademark in Mexico?
Article 237 of the Mexican Trademark Law requires that the applicant files a declaration of use when renewing the trademark. This obligation applies to trademarks registered directly before the Mexican Trademark office and those with an international registration.
For a national trademark, the owner should file the declaration of use at the same time of renewal. The renewal period starts six months before expiration and ends six months after expiration (grace period).
For Madrid protocol Trademarks the situation is different; in this case, the declaration has to be filed three (3) months (not extendable) after the renewal notice.
It is crucial to know that the renewal of an international trademark using the Madrid System does not comply with this need of filing a declaration of use. It can happen that you renewed your trademark on the WIPO system, but it lapses in Mexico because you have not made the use declaration.
What is the scope of the declaration of use for a trademark in Mexico?
The Mexican law requires a simple declaration. There is no need to show evidence as necessary in the United States. This declaration of use must also include a list of goods or services for which the brand has been used. This list can be the same or shorter as the list of goods and services but can not include new services or products. If you have been using or planning to use the trademark in connection to new goods or services, you should file a new application covering those.
The declaration can be filed by us as your local authorized representative and must include the payment of an official fee.
What happens if I don't file a proper declaration of use in Mexico?
If you don't file the declaration at the right moment, the Mexican Office will issue a notice and give you two months to comply.
If you miss all the opportunities, your trademark will automatically lapse. This means that the trademark becomes immediately available to the public, and anyone can register it.