Statement of trademark use

According to the Federal Law for the Protection of Industrial Property (“LFPPI”), as of 2021, a declaration of effective use of registered distinctive signs (trademarks among others) must be filed before the Mexican Institute of Industrial Property (“IMPI”).

What is a declaration of use?

It is an obligation of the holders of registered distinctive signs  to notify to the IMPI that such registrations are being used in the products or services that were protected.

Which are the distinctive signs that must file the declaration of use?

Registrations of: (i) trademarks; (ii) collective marks; (iii) certification marks; (iv) commercial notice; and (v) trade name.

When is it filed?

Under the LFPPI, it must be filed three years after the registration was granted and the IMPI will have 3 months to be notified of such use. It should be considered that there is no extension to notify the declaration of use.

The registrations of the distinctive signs that must file the declaration of use are those that were granted from August 10, 2018, so as of August 10, 2021 the first declarations of use of such distinctive signs should be filed.

What must I file in the declaration of use?

The declaration of use is bona fide, so you should not submit any evidence proving the use of the registration of the distinctive sign.

It is worth mentioning that it is not possible to add products or services that are not protected by the registration, however, it is possible to limit them, therefore, only the products or services in which the registration is really and effectively being used must be indicated.

It is important to mention that even if you do not submit any proof of use, it is very important to have them, since the declaration of use does not prevent a third party from requesting before the IMPI the administrative declaration of expiration of a registration for lack of use.

What happens if I do not file the declaration of use?

The consequence of NOT filing the declaration of use or not doing it within the term established by the LFPPI is that the registration will expire by operation of law, without requiring a declaration by the IMPI. This is a new legal requirement to continue keeping the registration of the distinctive sign.

Does the declaration of use have to be filed every three years?

No, it will only be filed in the third year after the registration was obtained. Subsequent declarations of use must be filed together with the renewal of the registration (every 10 years).

Should you require further information in relation to this subject or advice to obtain the relevant registration, please do not hesitate to contact us.

Yours sincerely,

Cannizzo