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By: Jaime Israel Davila Gomez, Lawyer.
Derived from the reforms to the Industrial Property Law in 2018, the figure of the declaration of real and effective use for distinctive signs was introduced in Mexico.
This figure implies for the owners of registered trademarks the obligation to prove to the Mexican Institute of Industrial Property (IMPI) that they are being used to distinguish services or products in the market.
This declaration must be made three years after obtaining the corresponding title, through the filling and presentation of an application before the IMPI and the payment of a fee, and applies to all registered trademarks as of August 10, 2018.
Although the aforementioned law was repealed last year, the new law, called the Federal Law for the Protection of Industrial Property, contemplates the same figure with the same requirements, so the declaration continues to be a procedure that must be carried out by those interested in keeping their trademarks; the latter, because if the declaration is not made in a timely manner (in a period of 3 months after the 3 years after the trademark was granted) the trademark in question will expire and its owner will no longer have any rights on it.
It is important to note that the declaration not only allows us to retain ownership of the industrial property rights of the respective sign but also represents a manifestation of the products or services that are actually being placed on the market with the sign in question.
Although it seems like a simple procedure, it should always be done hand in hand with a lawyer who specializes in these protections, as the effects of the said declaration have a direct impact on the scope of the trademark in the future and it comes out well in case of conflict with other trademarks.
Trademarks granted before August 10, 2018, must make the declaration at the time of being renewed.
