Declaration of use for trademarks filed directly at the Mexican Trademark Office and through the Madrid Protocol

In previous posts, we informed that the declaration of actual and effective use is a recent obligation for trademark owners in Mexico.

The declaration of use must be made in two moments:

1. Within 3 months following the date on which the trademark reaches 3 years of registration.

This obligation applies to trademarks granted by the Mexican Trademark Office since August 10, 2018 regardless of their filing date.

In cases where the protection under an international registration is extended to Mexico under Article 3ter of the Madrid Protocol, the right-holder must declare use within 3 months following the third year of registration.

2.  In the renewal phase of a trademark registration.

The renewal application will be useful to declare use. This obligation will apply to all renewal petitions filed as from August 10, 2018.

But what about registrations renewed under Article 7 of the Madrid Protocol?

The right-holders must declare the actual and effective use of the mark directly to the Mexican Trademark Office within 3 months after the renewal notice is made by the International Bureau of WIPO.

Failure to declare use will have as a consequence the ex – officio lapsing of the trademark registration.

In both scenarios, the right-holder will be required to indicate the goods or services for which use of the trademark is declared and to pay  government fees. Evidence of use is not necessary.

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