Do I have to file the Declaration of Use of my trademark?
J. Rafael Amador Espinosa
Due to the Modifications to the Intellectual Property Legislation in Mexico in which the Industrial Property Law was abrogated and the Federal Law for the Protection of Industrial Property (“LFPPI”) entered into force as of November 5, 2020, the subject of the declaration of use becomes relevant as August 2021.
LFPPI provides that every holder of a trademark registration must declare its use, during the following three months from the third year after the registration has been granted, indicating the specific products or services on which the trademark is used, together with the payment of the governmental fees.
The registration will continue valid only for those products or services mentioned on the declaration; if the holder does not declare the use, the registration will expire without any further declaration by the Mexican Institute of Industrial Property (“IMPI”).
Based on the Eleventh transitory of the decree that issues the LFPPI all trademarks that have obtained their registration as of August 10, 2018, meaning those granted on August 10, 2018, inclusive, must file a declaration of use within three months as of the third anniversary of their registration.
In my opinion, the transitory article is a retroactive application of the LFPPI to the detriment of the governed, since the rules applicable to trademarks should be those in force at the time of its application, specifically, the administrative proceedings must be governed by the law in force at the time of filling and not at the discretionary moment in which authority decided to favorably resolve the proceeding to its applicant.
However, as a practical recommendation and to not have to request before a judge the recognition of this right, my recommendation is to file the declaration of use within the period established in the LFPPI.
You can download the declaration form in Spanish here.
