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Mexico: Amendments introduce new rules for international trade mark registrations

It is widely known that amendments to the Mexican Law of Industrial Property which have an impact on trade marks came into full force on August 10 2018. Especially relevant is the Declaration of Effective Use (DOU) to preserve trade mark protection. A first DOU is provided for those registrations granted from August 10 2018 and must be filed within three months of the third anniversary of the date of grant of the registration. Failure to file the DOU will cause the registration to lapse. In turn, for renewal purposes, a DOU must be filed. In both cases the DOU's must specify the goods/services for which the trade mark is effectively in use in Mexico. Protection will remain only for those specific goods or services.

With respect to international registrations designating Mexico relevant rules have been published in the Official Diary of September 6 2018. According to them, a DOU must be filed at the Mexican Institute of Industrial Property (IMPI) within three months of the third anniversary of the national registration including the list of goods/services on which the mark is effectively used in Mexico. Regarding renewals, the rules provide that once the titleholder of the international registration has been notified of the renewal from WIPO, the titleholder must file the DOU within the next three months specifying the goods/services on which the trade mark has been effectively used in Mexico provided that the national registration has been granted for at least three years.

There will not be an official action requesting the titleholders of the international registrations to file the DOU, so it is convenient to appoint a Mexican lawyer to monitor deadlines.

Mauricio Narváez

San Ángel


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