Information notice no. 32/2024
Mexico City, January 20, 2025
WIPO has published a notice clarifying various aspects regarding the submission of a declaration of actual and effective use of a trademark derived from an international registration designating Mexico. This notice results from communications made by the Mexican Institute of Industrial Property (MIIP) to WIPO.
Holders of international registrations that have extended protection to Mexico are required to submit a declaration of actual and effective use of the trademark. Therefore, in said notice they clarify the deadlines applicable in each case, as follows:
Declaration of Use for the third year
a. Within three months from the date of the third calendar year of the granting of protection to the trademark in Mexico, provided that the national registration certificate is issued by MIIP after August 10, 2018.
In this case, if the holder does not declare the real and effective use of the trademark, the registration will expire automatically without requiring a declaration by MIIP.
Declaration of Use after renewal of the international registration
b. Within three months after the publication in WIPO Gazette of the renewal of the international registration made by the International Bureau, provided that the granting of protection in Mexico is at least three years old.
Regarding this scenario, if the owner does not declare the real and effective use of the trademark, MIIP will require the owner to remedy the omission within two months, through publication in MIIP Industrial Property Gazette. In the event of failure to comply with this requirement within the specified period, the registration will automatically lapse without requiring a declaration by MIIP.
In both obligations, when the declarations of use specified above have not been submitted, MIIP will notify WIPO of the invalidation of the effects of the corresponding international registrations, in accordance with Rule 19 of the Regulations of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
This notice is of very important considering the previous uncertainty regarding the due moment for the filing of the declaration of actual and effective use derived from the renewal of an international registration.
It is worth mentioning that the “AGREEMENT ESTABLISHING THE GUIDELINES FOR THE ATTENTION OF APPLICATIONS, PETITIONS AND PROMOTIONS FILED IN ACCORDANCE WITH THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS BEFORE THE MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY”, establishes that said declaration of use must be submitted “within three months following the notification of the renewal made by the International Office”, however, it does not specify which notification, whether the one made by WIPO to the applicant or the one made by WIPO to MIIP, taking into account that the notification made by WIPO to MIIP is not immediately published.
In this sense, this communication undoubtedly provides legal certainty to the different actors who use and benefit from the trademark system in Mexico by clearly establishing the particularities of the obligation to declare actual and effective use.
If you require additional information or further details regarding this notice or any obligation derived for the maintenance and conservation of your trademark rights, the Trademark team at Basham, Ringe & Correa is at your disposal.
Sincerely,
Eduardo Kleinberg
Juan Carlos Hernández
Mariana Vargas
Santiago Zubikarai Gonzalez
sgonzalez@basham.com.mx
Daniel Castro
