The new statement of use of registered trademarks in Mexico

As I reported in an earlier post (see Mexico starts a new era in Trademark Law (the amendments of May, 2018)), last May 18, 2018, the Official Journal of the Federation published important amendments to the Mexican Industrial Property Law, particularly in the field of trademarks. The amendments became in force on August 10, 2018.

In general, the changes had a favorable reception. However, some amendments were not welcome. One of the changes, that I did not like, refers to the reintroduction of the burden of filing a declaration of actual and effective use of the trademark after the third anniversary of issuance of the registration, in order to keep it alive.

As background, the Trademarks and Inventions Statute of 1976 stated that trademark owners had to file a statement and evidence of use after the third year of registration, and again when renewing. This burden was deleted in the 1991 Industrial Property Law (See Is it neccesary to file evidence of use of a trademark in Mexico to keep it alive?). Now, almost 27 years later, it reappears.

The amended articles 128 and 152, paragraph III, of the Industrial Property Law, provide that the owner of a trademark registration must file a statement of actual and effective use of the trademark after three years of registration. The window to file the statement is three months, counted from the date of the third anniversary of issuance of the registration. Failure to file the statement of actual and effective use of the registered trademark would result in the ipso iure abandonment of the registration.

If the trademark registration lists goods or services different from the ones that have been actually identified with the trademark in Mexico, the declaration of use may not be filed and the registration will become abandoned too.

The burden to file the statement of actual and effective use affects owners of nationally filed trademark registrations and owners of Madrid International Registrations, if the registration or declaration of protection in Mexico were issued on August 10, 2018, and thereafter.

(Update March 7, 2019: The declaration of actual and effective use is also due when renewing the local trademark registration or the international trademark registration. Read more here.)

(Update March 14, 2019: Applicants must be careful when filing the declaration of actual and effective use, either at the third year of registration or when renewing; the coverage of the trademark registration shall be limited to the goods or services stated in the declaration of use, although it is questionable whether such a limitation is legal.)

The reasons behind the new burden to file a statement of actual and effective use are unclear, but the Mexican Patent and Trademark Office will charge a government fee of about US$75.00 for each declaration of use filed.

Although it is evident that the new burden will apply to Mexican trademark registrations issued on August 10, 2018, and thereafter, there are concerns about the possible ex post facto enforcement of the amended stipulations to trademark registrations issued before August 10, 2018, especially the ones issued after August 10, 2015. Some lawyers say that amended articles 128 and 152, paragraph III of the Industrial Property Law may be applied ex post facto, thus if trademark owners of registrations issued after August 10, 2015, do not file the statement of actual and effective use, the registration will become abandoned. Of course, these lawyers are sending communications advising owners of registered trademarks issued between August 10, 2015, and August 10, 2018, to file the statement of use.

In my opinion, there are no grounds to claim that amended articles 128 and 152, paragraph III, of the Industrial Property Law may be enforced ex post facto.

Article 14 of the Constitution states, as a rule, that no law shall be enforced ex post facto. There are two exceptions:

1. If the new law expressly provides that it shall be enforced ex post facto, as some precedents explain[1]. If such an ex post facto enforcement of the law harms an acquired right (opposed to a potential right), it may be declared unconstitutional. If it benefits the recipient of the law, then it would be a valid ex post facto enforcement.

In the case of amended articles 128 and 152, paragraph III, of the Industrial Property Law, there is no stipulation in the amended statute or transitory provisions, allowing the ex post facto enforcement of any of the amended articles. Therefore, no amended provisions, especially the ones regarding the burden to file a declaration of use, may be applied ex post facto to trademark and slogan registrations issued before August 10, 2018.

2. The second exception that allows the ex post facto application of a law is that the amended provisions improve the general civil rights of a person, or benefits a person subject to a punitive criminal, tax or administrative procedure. Only in these cases, an amended provision may be enforced ex post facto even if the law does not expressly authorized such an application.

Enacting a statutory provision stating a new burden to trademark owners to keep the registration alive, with nothing in return, is not a benefit and does not improve anything for rights holders, so I fail to see how amended articles 128 and 152, paragraph III, of the Industrial Property Law may be automatically enforced ex post facto.

Finally, Transitory Article Two of the amended provisions states that trademark applications and oppositions filed before the amendments became enforceable (August 10, 2018), shall be prosecuted and decided according to the statutory provisions in force when the application was filed.

The above is actually a relevant provision, even if it is unrelated to the burden of filing a statement of actual and effective use of the registered trademark. Unlike substantive rights, parties in a procedure do not have acquired rights for future actions and terms within the procedure; amendments to procedural laws cause that the amended provisions become applicable to ongoing examinations, unless otherwise stipulated in the statute. Without Transitory Article Two, ongoing trademark and slogan application procedures would have continued under the new amended procedural rules, and that could have been messy. Transitory Article Two allows the MPTO to continue the examination of applications filed before August 10, 2018, under the old rules.

In summary, I believe that there is no reason to state that the filing of a statement of actual and effective use of a Mexican registered trademark, when it becomes three years old, is compulsory for trademark registrations issued before August 10, 2018, in order to avoid the ipso iure abandonment. However, the statement of actual and effective use (and the government fee associated with such a statement) will have to be filed simultaneously with the renewal, regardless if the registration was issued before or after August 10, 2018.

I think that the reason why some colleagues are advising clients to file statements of use, in spite that their trademarks were issued before August 1, 2018, is that many lawyers do not fully understand what the ex post facto application of the law is and how it works.

[1] “RETROACTIVIDAD DE LA LEY”, at Semanario Judicial de la Federación, Quinta Época, Tomo VI, page 726; “RETROACTIVIDAD DE LA LEY (TEORÍA DE LOS DERECHOS ADQUIRIDOS) (LEGISLACIONES DEL DISTRITO FEDERAL Y DE YUCATÁN)”, at Semanario Judicial de la Federación, Quinta Época, Tomo LXXVIII, page 2435; “RETROACTIVIDAD. CUANDO ES JURIDICA LA APLICACION RETROACTIVA DE LA LEY”, at Semanario Judicial de la Federación, Quinta Época, Tomo CXXXII, page 304.