Trademark Maintenance in Mexico: Declaration of Actual and Effective Use of Trademarks under Madrid Protocol

The Federal Law for the Protection of Industrial Property requires trademark titleholders to submit the declaration of the actual and effective use of their respective trademarks.

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In connection with International Registrations where territorial protection was extended with respect to Mexico, such mandatory filing will be required at two points in time:

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1. Within the three months following from the date on which the national registration reaches three years from the granting date in Mexico; by filing directly with the Mexican Industrial Property Institute.
2. Upon submitting a request for the renewal of an International Registration pursuant to the Madrid Protocol. In this case, the titleholder shall declare the actual and effective use of the mark directly with the Mexican Industrial Property Institute within the three following months after the renewal notice is made by the International Bureau of World Intellectual Property Organization.

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In both cases, the effect of not complying with the filing of the declaration of use in due time and form would result in the automatic cancellation of the trademark registration, without the need for a declaration by the authority.

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In this regard, we have identified several cases of trademark owners which are users of the Madrid Protocol that have lost the validity of their registrations due to non-compliance with the specific obligations applicable to the jurisdiction of Mexico, since they do not have a representative in this jurisdiction who is in charge of monitoring and alerting them of the applicable time to file the corresponding declaration of use.

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We can assist you by performing an audit of your trademarks to confirm compliance with this and any other obligation provided by the applicable law and record the members of our Firm as your appointed representative in Mexico.

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In case of requiring additional information or advice on the actions and requirements to maintain your industrial property rights in Mexico, please do not hesitate to contact our expert team.