As previously informed, recent amendments to the Mexican Industrial Property Law, coming into full force as of August 10, compel trademark owners to file declarations of use (DU) for i) registrations to be renewed, as well as for ii) those turning 3 years form the granting date.
For the latter, there are two possible interpretations based on some transitional provisions set forth in the draft amendments to both, the law and the regulations:
1) Many local agents consider that mandatory DU will apply only for registrations granted on or after August 10. This statement has also been recently publicly made by IMPI’s Trademark Director;
2) On the other hand, given that said transitional provisions might be deemed contradictory to our Constitutional law as well as to IP maintenance rules and practice, a second interpretation arises asserting that a declaration is due for all trademark registrations where the 3rd year declaration date falls after the new law comes into effect.
With the above in mind, for those registrations having a DU filing due as of August 10, we would strongly suggest complying with this new mandatory requirement since, in the event that a conflicting third party were to challenge any given registration (which was theoretically subject to a mandatory DU) based precisely on the lack of the filing of such declaration, the registration would definitely be jeopardized as there would not be any legal grounds (other than a transitional provision) to actually defend the contest.
Please be advised this issue is still being discussed in different Associations and Chambers with the corresponding Authorities. In any case, the amended Regulation on the Industrial Property Law (yet to be published) will likely settle this situation; however, as long as a legally-binding criteria is not regulated and published, we would strongly advise to file DU for trademark registrations turning 3 years after the entry into force of the amendments.
Please rest assured that we will let you know as soon as any development arises on this situation and we remain pending of any further assistance or additional inquiries you might have.