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24 September 2018
Various amendments to the Industrial Property Law's trademark chapter were published in the Official Gazette on 18 May 2018 and entered into force on 10 August 2018 (for further details please see "Important amendments to Industrial Property Law").
The amendments make a number of important changes to the law, including introducing a requirement for trademark owners to submit a declaration of use under oath within three months from the three-year anniversary of the granting of their mark's registration. If such declaration is not filed within this period, the registration will lapse.
Under Article 2 of the published decree (Transitional Provisions), trademark applications that were being prosecuted when the amendments entered into force will be processed according to the legal dispositions that were in force on the application's filing date.
Further, in accordance with the Constitution, no law can be retroactively applied to a party to its detriment. The fact that a trademark registration granted prior to the amendments will be considered to have lapsed if a declaration of use is not submitted within three months from the three-year anniversary of the registration's granting is clearly detrimental to trademark owners. Thus, the decree arguably cannot apply retroactively to marks granted before 10 August 2018.
Several discussions have taken place with Mexican Institute of Industrial Property (IMPI) officers in order to clarify the criteria that they will apply regarding declarations of use. Officers have advised that declarations of use must be submitted within three months from the three-year anniversary of all registrations granted after 10 August 2018 – even though they would have been filed before such date. Conversely, declarations need not be submitted within this period for registrations that were granted before 10 August 2018; instead declarations for such marks must be filed only on renewal.
Nevertheless, different interpretations could be concluded by other judicial authorities due to the fact that the published decree is unclear on which registrations will be vulnerable to lapse in case of a failure to submit a declaration of use. Further, the authorities have yet to publish the regulations accompanying the amendments. As such, in order to avoid any unnecessary risks, it is advisable to submit a declaration of use for all marks granted from 10 May 2015 onwards.
Notably, declarations of use cannot be filed through the World Intellectual Property Office; rather, they must be submitted directly to IMPI.
For further information on this topic please contact Rosa Nuria Becerril at Becerril, Coca and Becerril SC by telephone (+52 55 5263 8730) or email (firstname.lastname@example.org). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.
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