The amendment to the (now repealed) Intellectual Property Law published in the Official Gazette on May 18, 2018 brought a new figure inherited by the current Federal Law for the Protection of Intellectual Property: the declaration of use.
This provision is highly relevant today taking into account that next August 10, 2021, the first declarations of use of protected distinctive signs must be filed before the Mexican Institute of Industrial Property.
WHAT IS THE DECLARATION OF USE?
The declaration of use is a mandatory legal requirement to be filed before the Mexican Institute of Industrial Property. It consists of declaring the real and effective use of the products or services protected by the distinctive signs for which registration was obtained.
TO WHICH DISTINCTIVE SIGNS IS THE DECLARATION OF USE APPLICABLE?
Trademark registrations, collective trademark registrations, commercial notice registrations, trade name publications, and certification trademark registrations.
IN WHICH LAW AND ARTICLE IS THIS OBLIGATION OF DECLARATION OF USE ESTABLISHED?
Article 233 of the Federal Law for the Protection of Intellectual Property:
Article 233.- The trademark must be used in national territory, as it was registered or with modifications that do not alter its distinctive character.
The owner of a trademark must declare its real and effective use, indicating the specific products or services to which it is applied, accompanied by the payment of the corresponding fee.
The declaration shall be filed with the Institute during the following three months, counted from the third year after the registration has been granted.
The scope of protection of the registration will continue only for those products or services for which the use has been declared.
If the owner does not declare the use, the registration will lapse as of right, without the need for a declaration by the Institute.
WHEN MUST THE DECLARATION OF USE BE FILED?
The holder of such registration has a term of 3 months to be counted from the third year of the granting of their distinctive sign registration.
For instance, owners of distinctive signs granted as of August 10, 2018 (date on which the amendment to the Industrial Property Law that introduced this figure came into force) will be required to be the first to file their declaration of use as of August 10, 2021. The deadline for filing the declaration of use for these holders will be November 10, 2021.
WHAT IS THE CONSEQUENCE OF NOT FILING THE DECLARATION OF USE?
Pursuant to the aforementioned article 233, the registration of the distinctive sign shall lapse ex officio, and the owner shall lose all exclusive rights of such registration.
WHAT IS TO BE DECLARED?
The real and effective use of all the products or services for which the registration has been obtained must be declared.
It is important to take into account that it is not possible to declare the use of products or services that are not protected; however, it is possible to omit the declaration of some of those that are protected. The latter, provided that the owner does not plan to use them in the future, since the goods or services on which the use is not declared will cease to be protected by the registration of the distinctive sign.
IS IT NECESSARY TO FILE PROOF OF USE?
It is not necessary to file proof of use. The declaration of use is made under oath and in good faith.
RENEWAL OF THE DECLARATION OF USE IS DIFFERENT
It should be clarified that the validity renewal filing of a distinctive sign contains the excerpt (and requirement) to declare the use of products or services. However, the declaration of use discussed in this topic is a procedure that is carried out independently from the renewal.
IS IT NECESSARY TO DECLARE USE EVERY THREE YEARS?
No. The declaration of use shall only be filed during the three months counted from the third year in which the registration was granted, and such procedure is unique. The following declarations of use to be made will be included in the validity renewal of the distinctive signs registered.
As this is a mandatory legal requirement for distinctive signs granted as of August 10, 2021, it is important to keep in mind the period and manner of filing, in order to keep the registration of the trademark, commercial notice or any other distinctive sign granted in force, otherwise, the exclusive rights of the same will be lost.
At ClarkeModet we have the expertise and surveillance systems to monitor and file the declarations of use of our clients’ distinctive signs. We will be pleased to offer you legal advice and the service to carry out this procedure in a timely manner.