Dear Colleagues,

We would like to share an important update regarding the maintenance of trademarks derived from International Trademark Registrations in Mexico.

DECLARATIONS OF USE

As a reminder, all Mexican trademark registrations granted after August 10, 2018—whether national registrations or designations of International Registrations—are subject to the following Declarations of Use (DoU) requirements:

1. First DoU: Must be filed within the three months following the third anniversary of the registration.
2. Second DoU: Must be filed within the three months following the renewal notice issued by the International Bureau of WIPO to the Mexican Institute of Industrial Property (IMPI).
3. All subsequent DOUs come upon renewal every ten years. It is not necessary to declare use every three years, but the use should not be interrupted for more than three years to avoid a non-use cancellation action from a third party.

Failure to submit these Declarations of Use will result in the automatic cancellation of the trademark registration.

VULNERABILITY TO CANCELLATIONS

We have identified recent cases where holders of International Registrations lost their Mexican registration due to expiration or invalidation during cancellation actions. In such cases, the holders were not personally notified because they required a registered address or designated representative in Mexico.

By legal provision, if no address is registered for the holder ovr their representative in Mexico, the Trademark Office will notify the owner via a single edict published in the Official Gazette of the Federation.

The Office is not required to send any notification through WIPO, meaning this edict often goes unnoticed. This method of notification can result in proceedings being processed and resolved in default, potentially leading to the unintentional loss of trademark rights without the owner’s knowledge.

Even for International Registrations that transition into National Designations without requiring initial assistance or intervention by a Mexican representative, the absence of a registered address makes them susceptible to edict-based notifications in any subsequent legal actions.

To mitigate these risks, we strongly recommend appointing an attorney in Mexico to represent all National Designations of International Registration.

It is important to note that Mexico is not a “multi-class” jurisdiction, so representation must be established for each national registration in each class.

DEALING WITH PROVISIONAL REFUSALS

National application designations often receive office actions related to formalities, legal impediments, citations of prior trademarks, oppositions, or a combination of these. These office actions must be addressed and responded to directly with the Mexican Institute of Industrial Property (IMPI) through a Mexican representative.

The response period is two months from the date of notification, with an automatic two-month extension available. Responding to office actions related solely to formalities is straightforward. If no substantial objections accompany them, registration is guaranteed as long as the response is submitted correctly and on time.

However, responding to substantive office actions is more complex. When facing citations of prior trademarks or oppositions, there are three main options to overcome them:

1. Argue that the marks in question are not confusingly similar; 
2. Make the same argument as in (a) but also obtain a consent agreement from the owner of the cited trademark; or 
3. Challenge the cited trademark with a non-use or prior-use cancellation action.

A simple scanned copy of a Power of Attorney (POA) is sufficient to respond to an office action. However, if challenging a cited trademark or opposing mark with a cancellation action, the POA must be certified and Apostilled.

We hope this information is helpful. Please feel free to contact us with any questions or for further guidance.

Kind regards,
Iberbrand S.C.