Important Information regarding International Registrations in Mexico

September 10, 2018

Important Information regarding International Registrations in Mexico

Following the enactment of the Amendments to the Mexican Trademark Law as from August 10, 2018, the following relevant Rules applying to International Registrations as filed under the Madrid Protocol were published in the Official Diary on September 6, 2018.

1. Collective, Certification and Co-owned Trademarks: Applicants of International Registrations for those trademarks designating Mexico must file before IMPI the corresponding “Rules of Use” document when the designation is received by said authority. If the document is not filed at that moment, it will have to be submitted after a provisional refusal is issued requesting the submission of such document.
2. Opposition: If an opposition is filed against a national application derived from an International Registration IMPI will issue a provisional refusal addressed to WIPO.

3. Declaration of Actual and Effective Use (DOU): A DOU must be filed before IMPI within the next 3 months after the third year anniversary of the national registration. The DOU must contain the list of goods/services on which the mark is being used in Mexico. The protection will remain over those goods/services indicated in the DOU.
4. Renewals: Within the next 3 months after the renewal of an International Registration is notified to IMPI, its titleholder must file a Declaration of Actual and Effective Use (DOU) with IMPI specifying the goods and/or services on which the trademark has been effectively used in Mexico. If the national registration is granted in less than 3 years before the renewal date, it is not necessary to file the DOU.

In view of the above, and bearing in mind that there will be no office action from IMPI requesting owners of the IR’s to file the DOU mentioned in point 4) above, we encourage all of our client’s to appoint a Mexican lawyer in each one of the Mexican applications/registrations derived from an International Registration.