Both the old Industrial Property Law and the recently enacted Federal Law for the Protection of Industrial Property, state provisions that pose significant challenges, especially for holders of International Registrations. It is not that the Mexican legislation is particularly hostile to foreign applicants using the Madrid Protocol, but it ignores the special situation of users of the Madrid system before the Mexican legal system, namely, that they are not in Mexico.

The following are the three situations that, in my opinion, imply the biggest risk for Madrid users of losing the trademark protection in Mexico.

1. Oppositions.

Under the new law, if an applicant fails to answer an opposition within a two-month term counted from the day after the MPTO notifies said opposition, the trademark application or request for protection in Mexico becomes automatically abandoned. Right now, the MPTO does not issue an office action informing the applicant about the opposition and the term to answer; it just publishes the opposition in the Official Gazette (see example). If there is no office action, the MPTO sends nothing to WIPO.

The owners of International Registrations designating Mexico should review the Official Gazette (available online at https://siga.impi.gob.mx) to check for possible oppositions or hire someone to do it for them. It is true that the number or oppositions is relatively small if compared with the total number of trademark applications, but it takes only one unanswered opposition to ruin your day.

There is a possibility that, under the new law, the MPTO will issue an office action informing about the opposition, instead of simply publishing a notice in the Official Gazette. If this were the case, there is a chance that the MPTO will also send a notice to WIPO, so WIPO may notify the owner of the International Registration about the opposition. This would greatly benefit Madrid users, but we do not know, at this point, if that is going to happen. The Federal Law for the Protection of Industrial Property entered in force less than a month ago and there are many things we do not know how they are going to work.

2. Declarations of use.

All owners of trademark registrations issued on August 10, 2018 and on, must file a declaration of actual and effective use of the trademark (and a fee) with the MPTO within a short non-extendable three-month term after the third anniversary of registration or grant of protection in Mexico.

Another declaration of use is due when or after the renewal for all trademark registrations, no matter the date of issuance of the registration or if it is an International Registration.

Most likely, owners of International Registrations will not file the declaration of use or the fee simultaneously with the renewal application. Fear not: under the new law, the MPTO must request by mean of an office action the declaration of use if it was not filed with the renewal[1]; but do fear, we do not know yet how the MPTO would notify such an office action[2]. The sensible thing to do would be sending the office action to WIPO, allowing WIPO to notify the International Registration holder. However, there is the risk that the MPTO may decide notifying the request for the declaration of use through a publication in the Official Gazette, as it would happen with a regular domestic trademark registration. If the trademark owner fails to timely answer the office action and file the declaration of actual and effective use, the protection in Mexico will be abandoned.

3. Summons of invalidation and cancellation actions.

Many International Registrations get protected in Mexico without difficulties: there were no oppositions or refusals. Of course, that is good, but there is downside. The lack of intervention of a counsel addressed in Mexico also means that the owner of the International Registration does not have an address in Mexico where the MPTO may serve summons of cancellation or invalidation actions.

When the MPTO cannot serve summons of an invalidation or cancellation at the address of the trademark owner, the statute stipulates that the MPTO must serve summons through a publication in the Official Journal of the Federation and one of the main newspapers in Mexico. As you may imagine, there is a high chance that the owner of the International Registration never actually knows about the invalidation or cancellation action, eventually losing the trademark protection.

The only remedy would be appointing a Mexican lawyer or agent for each International Registration where Mexico was designated.

Update December 2020: This unfavorable situation caused for the lack of an address within the Mexican territory will eventually disappear after the third year of protection in Mexico, as a consequence of the filing of the declaration of actual and effective use. As I stated above, the declaration of use must be filed by an agent or counsel in Mexico, and she/he will state an address in Mexico when filing. It would be up to the trademark owners deciding if they want to wait three years before appointing a lawyer in Mexico.

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The Madrid Protocol is a great mechanism to protect trademarks in several jurisdictions in a cost-effective manner. However, maintaining the protection in Mexico involves some challenges that trademark owners should address. Hopefully, the future Rules of the Federal Law for the Protection of Industrial Property, to be published in a not-so-distant future, will soften some of the provisions that negatively impact Madrid users. Meanwhile, trademark owners should take steps to avoid losing rights on their valuable intangible assets.

[1] Under the old law, the trademark owner had only three months to file the declaration of use and fee, counted from the day after WIPO notifies the MPTO the renewal, with no request or office action.

[2] Actually, there is an inconsistency between the new law and the recently amended (November 11, 2020) Administrative Guidelines for the attention of Madrid filings. The new law expressly states that the MPTO will request the declaration of use if it were not filed with the renewal application, but the Guidelines state that no request will be issued. Of course, the law should prevail over the guidelines, but this kind of inconsistencies are not helpful at all.

La entrada The Mexican Industrial Property Law is tough on Madrid users se publicó primero en Reyes Fenig.

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.

La entrada Madrid users, be warned: Renewing the International Registration is not enough in Mexico (Update 2020) se publicó primero en Reyes Fenig.

(Update March 7, 2019: Owners of all trademark registrations (including Madrid International Registrations) need to file a declaration of actual and effective use  with the Mexican Patent and Trademark Office after the third anniversay of the grant of protection in Mexico (one declaration per Class) and after filing the renewal of the domestic or international registration. For more information, read here).

There are two frequent questions I receive from foreign colleagues and Mexican businessmen regarding maintenance of Mexican trademark registrations.

One is if it is required to file evidence of use of a trademark with the Mexican Patent and Trademark Office (MPTO) from time to time in order to keep a trademark registration alive. The answer is ‘no’.

The other question is: If it is not required by the statute, why some Mexican trademark lawyers insist in this filing every three years?

Since 1991 it is not necessary to file statements or evidence of use of a trademark with the MPTO in order to keep a trademark registration in force. It does not mean, however, that stopping using a registered trademark would not have negative consequences. If the use of a registered trademark is interrupted for three consecutive years or more, the registration would become vulnerable to a cancellation action by a third party with adverse legal standing.

Notwithstanding the above, when renewing a trademark registration (Mexican trademark registrations are renewed every ten years), the attorney of record must state under oath with the MPTO that the trademark is being used on at least one of the goods or services covered by the registration, and that the use of the trademark has not been interrupted for three consecutive years or more (specimens are not required). Therefore, a registered trademark that has not been used for three consecutive years should not be renewed.

Some Mexican colleagues state that filing proof of use every three years with the MPTO would prevent third parties from filing a cancellation action on grounds of lack of use, although such opinion lacks of support on the statute or some precedent from the courts.

The effects to filing evidence or statements of use from time to time would be limited to dissuade third parties from challenging the trademark registration, if the trademark owner shows that it would have evidence to defend the registration if it becomes necessary. Therefore, and assuming it is not a trademark renewal, filing a statement of use (even under oath) would not provide any actual benefit for the trademark owner. In any case, the MPTO would issue an office action, but it would only be an acknowledgement of receipt; it would not acknowledge that the registrant proved the use of the mark.

If a third party files a cancellation action on grounds of lack of use, the trademark owner would have to prove that the trademark has been used in Mexico, either by the registered owner or a recorded licensee, regardless the evidence of use previously filed.

If a trademark owner is interested in filing some evidence of use in order to discourage third parties from challenging its trademark registration on grounds of non-use, we suggest filing evidence that would actually show the use of a trademark in Mexico, as in a cancellation action; a label or an affidavit of use would not be effective.

It is important to be very careful when filing proof of use with the MPTO. Filing wrong or insufficient evidence may actually encourage a third party to file the cancellation action due non-use instead of dissuading it.

When the filing of the evidence effectively discourages a third party from challenging the registered trademark, the trademak owner saves of thousands of dollars in attorneys fees, preparation of evidence and uncertainty about the outcome of the action. Unfortunately, the benefit is extremely difficult to measure.

La entrada Is it necessary to file evidence of use of a trademark in Mexico to keep it alive? se publicó primero en Reyes Fenig.