The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, better known simply as the Madrid Protocol, is an international treaty that provides a mechanism aimed to facilitate protecting a trademark in different countries.

Mexico joined the Madrid Protocol on November, 2012, and started accepting international registrations on February, 2013 (read our article about the accession of Mexico to the Madrid Protocol).

The Madrid Protocol is not perfect and applicants may find problems with the simultaneous examination of trademarks in different countries but, in general, I think it has proven to be a successful tool for international businesses.

Some countries’ legislation may provide specific burdens on right-holders of domestic and international registrations, forcing them to prepare additional filings to maintain the trademark rights in those countries.

The new Federal Law for the Protection of Industrial Property entered in force on November 5, 2020. It provides the filing of a declaration of actual and effective use. Such a declaration was added to the Mexican legislation since May, 2018.

The burden of filing the declaration of actual and effective use will impact, sooner or later, all trademark owners in Mexico, including owners of Madrid international trademark registrations.

The declaration of actual and effective use is due on two different moments:

1) Declaration of use after three years of registration.

The owners of trademark registrations issued on August 10, 2018, and thereafter, must file a declaration of actual and effective use, after the third anniversary of issuance of the registration. In the case of Madrid applicants, the filing is due after the third anniversary of granting of protection in Mexico (read our post about the new declaration of use).

The statutory term to file the declaration of use is very short: three months only, counted from the date the trademark registration (or the granting of protection of the international trademark registration in Mexico) becomes three years old.

One declaration is due per domestic registration. In the case of Madrid international trademark registrations, if the protection in Mexico was granted in more than one Class, one declaration of use is due in each Class; the Mexican Patent and Trademark Office (MPTO) assigns one separate Mexican registration number for each Class of products or services comprised in the International Registration. Further, each declaration of use has to be filed electronically or at the window of the MPTO by a local attorney authorized with a power of attorney. A government fee (about US$85.00) has to be paid with each declaration of use.

Failure to file the declaration of actual and effective use would result in the cancellation of the Mexican trademark registration or international registration, in full or in the Class where the declaration of use was not filed.

Furthermore, the protection in Mexico of the international registration shall be maintained only for the goods or services stated in the declaration(s) of actual and effective use.

2) Declaration of use when renewing.

A declaration of actual and effective use is required for all domestic trademark renewal applications filed on or after August 10, 2018.

In the case of Madrid International Trademark Registrations, a declaration of actual and effective use is due if filed on or after August 10, 2018. Given that it would be very difficult to file the declaration of use and the fee when filing the renewal with the World Intellectual Property Organization (WIPO), the MPTO will issue an office action, requesting the declaration of use and the fee[1]. We do not know if the MPTO will serve the office action through WIPO or if it will notify it through the Official Gazette.

One declaration of use per Class involved in the International Registration is due, and it has to be filed electronically or at the window of the MPTO by a local attorney. A government fee (about US$85.00) must be paid with each declaration of use, regardless any fee paid at WIPO with the renewal application.

The protection in Mexico shall be maintained only for the goods and/or services stated in the declaration(s) of actual and effective use.

[1] Under the old Industrial Property Law, the owner of the International Registration had three months to file the declaration of use, counted from the date WIPO notified the renewal, with no requierement from the MPTO. The notices that WIPO received from the MPTO explaining these, back then, new burden, may be reviewed here and here.