The first declarations of use of Mexican trademarks were filed this August, in line with the provisions of the Federal Law for the Protection of Industrial Property that entered into force on November 5, 2020.
This Law repealed the Industrial Property Law and established several novelties in the Mexican industrial property regime, among which: a modification in the term of validity of trademark registrations, the introduction of the cancellation action for non-use and an extension of the opposition period. Today, we will talk about the obligation for owners of registered trademarks to file a Declaration of Use, under the penalty of losing their right of exclusivity.
In accordance with article 233 of this Law, the declaration of use must be submitted during the three months-period after the third year of the granting of the registration, for trademarks registered after August 10, 2018.
Additionally, trademark registration renewal requests must also be complemented by a declaration of use, an obligation that aims to eliminate defensive and unused trademarks from the registry.
Regarding the content of the declaration of use it must indicate the products and services effectively marketed and offered to the Mexican consumers under the registered trademark. Products and services included in the trademark registration but that are not being used by their owner will be eliminated.
In conclusion, the declaration of use must be presented:
- Three years after the trademark registration when this occurred on August 10, 2018 or later.
- In conjunction with the application for the renewal of the trademark registration.
