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.

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.

La entrada The new statement of use of registered trademarks in Mexico 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.