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.

The number and relevance of the amendments are so big that I can’t refer to all of them in this post. Instead, I will briefly explain the changes that I believe are most relevant:

One very important change that I must refer right now is that the declaration of actual and effective use to maintain trademark rights in Mexico has been reinstated (see paragraph 11 below).

1. State of being in force: The amendments to the Statute will become in force on August 10, 2018.
2. Rules of the Statute: The implementation of the amendments will demand changes in the Rules of the Statute. As for today (June 17, 2018), the new Rules have not been published.
3. Protection of non-traditional Trademarks: The idea that only a visible sign could be protected as trademark is in the past. The amended Statute now explicitly provides that visible signs (including holographic figures), sounds, scents and trade-dress may be registered as trademark[1].

There is still no information about how applicants will have to describe a non-traditional trademark in the application; such information should be stipulated in the amended Rules of the Statute to be published soon (Update June 3, 2020: On September 3, 2019, the Mexican Patent and Trademark Office published the guidelines about trademark applications for non-traditional trademarks. Click here for more information.)

4. Trade-dress as Trademark. This is a delicate subject for merchants, service providers and manufacturers that rely on trade-dress to identify and distinguish their goods and services from competitors. If trade-dress is now registrable as a trademark[2], it means that Mexico will acknowledge exclusivity rights on trade-dress, but such an exclusivity right will be granted to the first filer; any other individual or entity using confusingly similar trade-dress may become an infringer. Therefore, trade-dress users should hurry to file the trademark application as soon as the amendments enter in force. 
5. New restrictions to register Trademarks. As the amendments allow a wider variety of signs to be registered as a trademark, there are new and, in some cases, clearer causes of refusal of trademark registration. There are several changes, but the ones that particularly called my attention, were the explicit prohibition to register marks filed in bad faith; words that reproduce Appeals of Origin and Geographic Designations; and words identical or confusingly similar to the title of literary or artistic works or the reproduction or imitations of elements of such works.
6. Secondary meaning. A mark that could be originally regarded as descriptive or generic mark may be registered if the applicant shows that it has developed a secondary meaning as a consequence of the use in commerce. Although this is a new provision in the Statute, the possibility of allowing the registration, as a trademark, of a descriptive or generic mark due secondary meaning was already stated in Mexican law through article 15.1 of TRIPS and some bilateral commercial treaties, as the Free Trade Treaty between Chile and Mexico[3]. 
7. Effectiveness of Coexisting Agreements. Amended article 90 of the Statute makes written agreements between trademark owners and applicants, allowing the last overcoming an anticipation, binding for the Mexican Patent and Trademark Office (MPTO), in the case of confusingly similar trademarks. If the trademarks were identical, in any aspect (phonetic, graphic or ideological), the MPTO may reject the consent and refuse the application.

The formal requirements of the agreement will be determined by the soon-to-be-issued Rules of the Statute. 

8. Certification Trademarks. Mexico will allow Certification Trademarks.
9. Description of Goods and Services. Amended article 113, paragraph IV, of the Statute, now demands applicants to state the specific goods or services to be identified with the trademark. It is not clear what the law means with “specific” although it seems that the intention is ending the practice of using the headers of the International Classes as description of products and services in the application.
10. More complex oppositions. Originally, anyone could file an opposition against a trademark application if it was filed on time and the government fee was paid. Now, opposers will have to prove legal standing.

Further, there is now a more detailed regulation about the evidence that may be filed in the opposition proceeding. 

11. Statement of use. Right-holders of trademark registrations issued on August 10, 2018, and thereafter, will have to file a statement of actual and effective use of the trademark in Mexico, and a government fee, within a three-month term counted from the third anniversary of issuance of the trademark registration (See The new statement of use of registered trademarks in Mexico).

Failure to file the statement of use would cause the ipso iure abandonment of the trademark registration.

The statement of use has to be filed only once after the third year of registration, and again simultaneously with each future renewal. 

12. More restrictive renewals. In order to renew a trademark registration, the trademark owner or the agent will have to state that there has been actual and effective use of the trademark. More important, the use of the registered trademark in one Class of goods or services will no longer benefit other registrations for an identical trademark in other Classes for renewal purposes.

Use on just one of the goods or services stated in the registration would be enough to support the renewal for all products and activities listed in the registration.

This rule will apply to all renewals filed on August 10, 2018, and thereafter, not only registrations issued after that date.

13. Additional cause of invalidation and longer term. The amendment added, as cause of invalidation of a trademark registration, the filing in bad faith of the trademark application. It is not clear yet what would be considered “bad faith” in order to make a registration vulnerable to the cause of invalidation.

The term provided in the statute of limitations to file the invalidation action against a trademark registration due earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark, applied to the same or similar goods or services, has been extended from three to five years, counted from the date of publication of the trademark registration in the Mexican Official Gazette.

The new cause of invalidation and extended term will only affect trademark registrations issued on August 10, 2018 and thereafter, regardless the date of application.

14. Notifications. Decisions and office actions issued in connection to a trademark application shall now be electronically notified through the Official Gazette.

Officials of the MPTO have explained that the objective of the amendments to the Statute is modernizing and harmonizing the Mexican industrial protection system, according to the current international trends of trademark law. I wonder is such modernization responds to the actual needs of domestic businesses or if it was an extra-logical imitation. Other amendments, such as requesting a statement of use after the third year of issuance of the trademark registration, seem an excessive burden on trademark owners, with no benefit in return.

[1] Article 89, paragraphs V, VI y VII, of the Industrial Property Law, as published in the Official Journal of the Federation on May 18, 2018.

[2] For registration purposes, trade-dress is defined as “the set of different operative elements, image elements, including size, design, color, form disposition, label, package, ornaments or any other that, in combination, allow the identification of a product or service in the market”. Article 89, paragraph VII, , of the Industrial Property Law, as published in the Official Journal of the Federation on May 18, 2018.

[3] Article 15-15.1 of the Free Trade Treaty between the Republic of Chile and the United Mexican States, published in the Official Journal of the Federation on July 28, 1999.

Diario oficial 18-may-18 (marcas)

La entrada Mexico starts a new era in Trademark Law (the amendments of May, 2018) se publicó primero en Reyes Fenig.

The amendments corrected a few inconsistencies between the Rules and the Industrial Property Statute (the Statute), adjusted a few regulations to follow some repeated rulings of the Federal Court of Tax and Administrative Affairs and simplified the acknowledgement of priority claims in trademark matters.

CHANGES TO THE RULES OF WORD MARKS

I think that the most important amendment to the Rules refers to word marks.

In Mexico, only graphic symbols are acknowledged as trademarks, thus only graphics may be registered to obtain exclusivity rights on them. Depending on the claims stated in the application and the characteristics of the mark, there are four kinds of registered trademarks: nominativas or word-marks, innominadas or design-only marks, mixtas or word+design marks and tridimensionales or three-dimensional marks.

Word-marks consist of literal elements only, such as a word, a phrase or a combination of numbers and/or letters. One issue that neither the Statute nor the Rules clarified was if symbols, such as &, @ and +, and written signs that do not exist in Spanish, such as the ‘ (apostrophe), could be registered as part of a word-mark.

The amendment to the Rules of June 10 seeks to clarify, in a restrictive and confusing way, what can be included in a word mark.

The amended last paragraph of section 56 of the Rules, now states that “word marks and slogans may only include letters or words taken from the roman alphabet, western Arabic numbers and those written signs that would help the correct understanding of the mark”.

What surprised me more of the amendment, was the used of the expression “Roman alphabet”. In Mexico the official language is Spanish, and Spanish speakers use the Spanish -not the Roman- alphabet.

I believe that the new section 56 of the Rules now clearly exclude symbols such as &, #, @, mathematical symbols (+, /, >, <) and currency symbols ($, €), among others, from being included in trademark applications for word-marks.

Further, the amended section 56 of the Rules makes it very clear that word marks may not be expressed in characters taken from non-Latin alphabets, such as Greek, Hebrew, Chinese, Arabic, Cyrillic, etc.

The reform does not prohibit the registration of trademarks that include mathematical symbols or letters from non-Latin alphabets. However, such trademarks may not be registered as word marks, given that the Rules now implicitly consider such characters as a sort of drawing. Therefore, trademarks with non-Latin Characters or other symbols as the ones explained above have to be filed as design-only marks (innominadas) or word+design (mixtas) marks.

This is a quite relevant change. If a trademark is registered as a word-mark, the trademark owner may use it in any font, size and color, and such use would be regarded as use of the registered trademark for maintenance purposes. If a trademark is filed as word+design or design-only, the registrant must attach a print of the trademark to the application; if the registration is issued, the trademark owner must use the trademark as registered, so the use may be acknowledged as valid use of the registered trademark for maintenance purposes, including renewal.

I did not understand the distinction in the amended section 56 of the Rules about “written signs that would help the correct understanding of the mark”. What is the point of the distinction? If there are written signs that would help the correct understanding of the mark, then there could be written signs that would not help the correct understanding of the mark, or worst, that help the incorrect understanding of the mark?

My opinion is that there are no written signs included in the mark that help the correct understanding of the trademark. Written signs included in the mark are not intended to helping understanding the mark; they are part of the mark, thus all orthographic signs should be allowed to be included in word-marks. I am sure that among the written signs that will not have a problem to be part of word-marks are the punctuation marks, the exclamation (¡ !) and interrogation points (¿ ?), the diaeresis and the accent, although doubts and objections about the dash and the apostrophe are likely.

Other unclear, and somehow odd, issue involves trademarks that evolved from the Latin alphabet but do not actually belong to it, i.e. “Æ”, “Ç”, “Ø”, etc. Given that a word mark may only include characters from the Roman alphabet, the first reaction could be that a trademark that includes such letters may not be registered as a word-mark.

However, there are letters in Spanish that evolved from the Roman alphabet, but do not actually belong to it, such as “J”, “W” and most notably the “Ñ”. There is no question that the “Ñ” belongs to the Spanish alphabet, but undoubtedly is was not a part of the Roman alphabet; further, the classic Latin alphabet did not include the “J” and “W”.

Certainly, it would be ridiculous stating that, as a consequence of the amendment of section 56 of the Rules, words that include the “Ñ”, “W” or “J” may not be registered as word-marks any long. Then, the new section 56 of the Rules should be understood in the sense that all words including letters that evolved from the Latin alphabet should be allowed to be part of word-marks, naturally including the “Ñ”, “W” and “J”, but also “ß”, “Å”, “Ŝ”, “Ų” and all other letters that do not exist in Spanish but in other languages that that evolved from Roman characters too.

I am not sure if the Mexican Patent and Trademark Office will use a narrow concept of “Roman Alphabet” (excluding the registration as word-marks of trademarks that use the “Ñ”, “J” or “W”) or liberal (including each and all letters that developed from Roman, regardless if they belong to the Spanish alphabet or not), but it would not the first time that a rule or statutory provision is constructed in a way different of what the Government or the Congress meant. As example, there is the case of the extension of life of pipe-line patents (see The extension of Life of Patents in Mexico)and the inclusion of formulation patents in the linkage system situated in section 67 Bis of the Rules (see The Mexican Supreme Court expands the linkage system to prevent patent infringement). It would be odd and regretful, but I would not be surprised if in the future, Wikipedia becomes the authorized source to know what trademarks may be registered as word-marks in Mexico and which ones do not.

The Mexican government would have avoided problems if, instead of using the phrase “Roman alphabet”, they would have used the expression “Spanish alphabet”.

Another topic that makes me uneasy is the reason behind the restrictive amendment to section 56 of the Rules. Why the Executive Branch decided to restrict the possibility of obtaining word-mark registrations to those trademarks using Latin characters only? In a global economy, especially in such an open economy as the Mexican, it does not make much sense to close the possibilities of giving full protection to trademarks originated in other nations just because they are written different.

Further, why denying registration as word-mark of trademarks that use non-orthographic characters (the +, @ and &, for example)? I do not see a technical reason for narrowing the kind of characters that a word-mark may include, especially in the case of symbols that are widely used in Mexico.

I also think that the Administration lost a good opportunity to clarify if it is valid disclaiming words, phrases or letters from word-mark trademark applications. It also waste the opportunity of explaining whether the registration of a design-only or word+design trademark filed in black and white or grays gives the trademark owner the right to use the registered design in any color or color combination, in spite of having being registered in white and black or grays.

In general, I am in favor of any amendment to the Rules or the Statute that provides more certainty about the procedures and substantive rights, even if I do not like the amendment itself. Therefore, the upside of the amendment of section 56 of the Rules is that now it is clear that trademarks including or consisting of non-orthographic symbols and signs, and marks written in non-Latin characters cannot be registered as word-marks in Mexico. Now we have to clarify, and probably the courts will do it, how narrow or liberal is going to be the concept of “Roman Alphabet” that Mexican lawyers will have to use in trademark law to determine if a trademark may be registered as word-mark.

Finally, an issue that should concern Mexican practitioners is the potential conflict between the new Mexican Rules and the Paris Convention, in connection with priority-based trademark applications for word-marks that include letters or signs that may not be registered in Mexico, under the amended Rules, as word-marks.

La entrada Amendments to the Rules Governing Registration of Word-Marks in Mexico se publicó primero en Reyes Fenig.

Mexican law was already quite liberal, when compared with most Latin American countries, regarding the formal requirements for power of attorney documents for trademark and patent filing, prosecution and maintenance. Mexican law does not demand notarization, consular legalization or Apostille on such documents. Now, the law is going a little further

The MPTO will no longer request a power of attorney document in most trademark filing cases.

Instead, the MPTO will consider that the agent is authorized to file the trademark application on behalf of the applicant if the agent states under oath that it has such an authority. Of course, the MPTO will continue accepting the power of attorney document if the agent files it, but the examiners will no require it, and the lack of filing of the power of attorney would no longer delay the formal examination of the trademark application, the renewal application or an application to record an assignment or license.

Starting April 1st 2010, the new templates for trademark applications and renewal application will be mandatory; these new templates reflect the amendments to the law concerning the power of attorney.

It is a great thing that the trademark filing procedures in Mexico are becoming less formal. However, many Mexican lawyers and practitioners are worried about the consequences of such amendments in the long term, especially in connection to the validity and enforceability of trademark registrations issued without filing a power of attorney with the MPTO.

As I see it, the documentary evidence of the authority to file a trademark application or renew a registration on behalf of a third party –the applicant- is a different thing from the authority itself. Under the current amended statute, a trademark registration may not be invalidated due the lack of the filing of the power of attorney or due formal flaws in the document. However, a trademark registration or renewal could be invalidated due the absolute lack of authorization (verbal or written) to file the trademark or the renewal application. It may seem a very thin distinction, but technically speaking it is a huge difference.

It also seems that the MPTO will only consider the individual that actually signs the trademark or renewal application as attorney of record. If later, another professional from the same firm has any intervention in the prosecution of the application, the MPTO will not acknowledge him/her as attorney-of-record and will demand a written power of attorney, if it has not been filed, or payment of the government fee for the appointment of a new attorney of record. This will be an extremely delicate situation for firms that allow different professionals to intervene in the prosecution of trademark applications, and from my perspective, such a practice would be absolutely unfair and illegal.

Therefore, although no longer essential for the approval of the trademark application, I strongly recommend executing a written power of attorney and filing it with the MPTO at some point during the prosecution of the trademark application, or even after the issuance of the trademark registration or renewal, in order to secure evidence of the existence of the authority to do such filings.

Although less publicized, the amendments to the filing guidelines of the MPTO will introduce some changes in the practice of trademark filing and prosecution in Mexico. The most obvious change is that now there are mandatory templates for the most relevant filings with the MPTO; before the amendment, there were templates only for trademark and patent applications and for trademark renewal applications. Agents and lawyers prepared their petitions for all the other filings, in the way they better thought it suited the law and their needs. I would assume that the use of templates should help the MPTO to expedite the recordation of assignments, licenses and changes of name.

However, the MPTO is not only changing the guidelines; it is also changing some of its own practices, and not for good. An important change in the MPTO’s practice is that it will no longer allow applicants to request the issuance of certified copies of documents previously filed with the MPTO, at the same time that the applicant is fulfilling a certain requirement associated to a record or application different from the ones the documents were filed.

For example, let’s assume that there are two separate trademark applications for the same mark but in different classes, claiming the same priority from a multiple-class foreign application. In the past, one certified copy of the foreign trademark application was enough to have the priority rights acknowledged in both Mexican trademark applications. When requesting the MPTO to acknowledge the priority rights in one application, the applicant filed the original certified copy; in the other application, when requesting the acknowledgement of the priority, the applicant could ask the MPTO to issue a certified copy of the priority document just filed in the first application, in order to evidence the existence of the priority right.

Now, with the change in the practice of the MPTO, if there were two separate trademark applications for the same mark but in different classes claiming the same priority from a multiple-class foreign application, the applicant’s agent will have to obtain as many certified copies of the priority document as she/he may need, before requesting the acknowledgement of the priority rights, and file each request of acknowledgement of priority rights with its own priority document.

A similar situation will take place with the recordation of assignments, licenses, franchises, mergers, changes of name and securities, when they involve more than one trademark registration/application. Basically, the change of the MPTO’s practice will be reflected in an increase of the out-of-pocket expenses and in many cases it will jeopardize the timely filing of documents when there is a non-extendable deadline.

It is odd to see how, on one hand, the filing and prosecution of trademark applications are becoming less formal, and at the same time, the MPTO changes its practice to make the filing and prosecution of trademarks less expedite. It does not make any sense, and I believe it will be just a matter of time before some applicants start appealing the MPTO’s refusals to issue certified copies or to allow the intervention of more than one professional in the prosecution of a trademark application.

La entrada Amendments to the Mexican Industrial Property Statute make the trademark filings less formal, but also raise some concerns se publicó primero en Reyes Fenig.

The renewal of trademark registrations is an important aspect of the maintenance of any IP portfolio. Making the right decision about renewing, or not renewing, allows the proprietor to maximize the value of its trademarks, or cut unnecessary expenses.

In this post, I am explaining the basic aspects about renewing trademarks in Mexico, calling the reader’s attention to two issues that should be carefully considered when the trademark owner decides to renew a trademark registration in our country.

The basics about trademark renewal in Mexico

1. Old law. A trademark registration filed under the old Industrial Property Law is valid for a ten-year term, counted from the filing date in Mexico, regardless the priority, date of registration or date of first use. The registration may be renewed an unlimited number of times for ten years terms.
2. New law. A trademark registration filed under the new Federal Law for the Protection of Industrial Property (i.e. filed on November 5, 2020 and on) is valid for a ten-year term counted from the date of registration, regardless the priority, date of application of date of first use.

Mexico does not allow multiple-class applications, so it is usual for an entity or individual to own several trademark registrations for the same trademark in different classes. Further, Mexico is less restrictive than other countries (mainly the United States) about the description of articles or services that may be listed in a trademark application, so the application may include products and activities that the applicant has no actual intention to identify with the mark, provided that they belong to the same class.

The window to renew a trademark registration lasts twelve months. It starts six months before the date of expiration of the registration and ends six months after said date. No additional terms are available.

Tricky issues concerning the renewal of trademark registrations

(1) Declaration of use

Although it is not necessary to file a specimen of the trademark or a sample of the branded product when filing the renewal application, the trademark lawyer or agent must state, under oath, the goods or services actually and effectively identified with the registered trademark to be renewed.

The declaration of use should list only the goods or services that have been actually identified in Mexico with the registered trademark; the scope of protection provided by the trademark registration would be limited to the goods or services stated in the declaration of use. This requirement is demanded for domestic trademark registrations and for International Trademark Registrations.

In the case of local trademarks, the declaration of actual and effective use is filed simultaneously with the renewal application. For International Trademark Registrations, as it is most likely that the declaration of use will not be filed with the renewal application, the new law states that the MPTO will issue an office action requesting the declaration. We still do not know how the MPTO will notify the request.

Owners of International Registrations should be aware that they will have to file one statement of use (and fee) per Class.

In the case of national trademark registrations, the declaration of use is filed simultaneously.

(2) Renewal fee

Mexico does not allow multiple-class applications. However, there are multiple-class registration. Because of the change from the old National Classification to the International Classification and the later amendments of the International Classification, the MPTO has unilaterally reclassified the products or services of the original description, sometimes creating multiple-class registrations.

For example, old trademark registrations in National Class 46 that covered ‘food and its ingredients’ were later reclassified in International Classes 01, 05, 29, 30 and 31. Similar reclassifications have taken place lately with the amendments to the International Classification or due changes in the directives of the MPTO (i.e. under the Seventh Edition of the Nice Classification, Mexican authorities used to classify retail and wholesale services in International Class 42 instead of 35).

The regulation that stipulates the government fee, provides that it shall be paid “per class”. Notwithstanding the above, most trademark lawyers in Mexico pay the government fee “per registration”.

The difference of calculating the fee “per registration” or “per class” is irrelevant in most cases, given that most trademark registrations list articles or services of only one International Class. However, there are a significant number of trademark registrations that have been reclassified and now explicitly include products or services of more than one International Class.

As stated above, the current implicit directive of the MPTO (there is no written document) is that the renewal fee should be paid “per registration”, in spite of the explicit provision regarding the payment “per class” stated in the regulation of government’s fees. Of course, if a trademark owner calculates and pays the renewal fee “per class” instead of “per registration”, the MPTO would accept the payment and renew the trademark registration, but there would be no refund.

The government fee for renewing a trademark registration is relatively high, thus calculating it “per registration” instead of “per class” is quite attractive (about $210.00 USD per registration instead of $210.00 USD per each class that might be included in the registration).

Since the MPTO has never objected the calculation of the renewal fee “per registration” and there are no published precedents about the invalidation of a trademark renewal, most Mexican trademark lawyers feel safe with the practice of paying a fee lower than the one explicitly stipulated in the regulation for multiple-class registrations. The lack of published precedents about the validity of underpaid renewals does not mean that there is no risk, but my experience is that the courts have refused to acknowledge a trademark registration as abandoned because the renewal fee was calculated “per registration” instead of “per class”.

La entrada Renewing Trademarks 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.