International registrations with designation of Mexico – a declaration of actual and effective use of the mark

international registrationsIn case of international registrations containing the designation of Mexico, there is a new requirement to file a declaration of actual and effective use of the mark.

1.The Mexican Institute of Industrial Property (IMPI) has provided to the International Bureau of the World Intellectual Property Organization (WIPO) information related to the requirement to file declarations of actual and effective use of a mark which is the subject of an international registration containing a designation of Mexico and has requested that this information be made available to users of the Madrid System.

2.The communication sent by IMPI reads as follows.

“Holders of international registrations containing the designation of Mexico must file a declaration of actual and effective use of the mark. Such declaration shall be filed directly with IMPI in the appropriate official format, as prescribed by the applicable laws and regulations and upon payment of a fee:

(a) within a three-month period, following three years counted from the date on which protection was granted in Mexico, as specified in the declaration sent by IMPI to the International Bureau of WIPO pursuant to Rule 18ter (1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement; and

(b) within three months from the notification of the renewal of the international registration by the International Bureau of WIPO.

The declaration of actual and effective use of the mark must be filed by the holder’s authorized representative with a local address, or by a legal representative in Mexico. A local address is required for purposes of notification.

On failure to file the declaration of actual and effective use within the prescribed time limits, IMPI shall declare, ex officio, the cancellation of the mark that is the subject of an international registration containing a designation of Mexico.”

3.Information regarding other changes made by amendments to the Mexican Industrial Property Law is available in Information Notice No. 13/2018.

4.Users of the Madrid System may contact IMPI for further information regarding such amendments and the requirement for submission of the aforementioned declaration.

Source: WIPO

    • May 2019
      Mon Tue Wed Thu Fri Sat Sun
      « Apr    
  • IP4all Weekly Bulletin

    You can subscribe to the weekly IP4ALL Bulletin.

  • Recommended videoView all | 

    The new EU trade mark Regulation enters into force on March 23rd. As a result, the Office for Harmonization in the Internal Market (OHIM) will change its name to the European Intellectual Property Office (EUIPO).

    The amending Regulation also revises the fees payable to the Office, including an overall reduction in their amounts, particularly in the case of trade mark renewal fees. On 23.3. 2016, the Office’s online application forms and fee calculator will be automatically updated to reflect the new system.
    From its base in Alicante, Spain, OHIM has processed more than 1.3 million Community trade mark applications in 23 EU languages, from nearly every country and region in the world, since 1996.

    The Amending Regulation was published on 24 December 2015 and is part of the EU trade mark reform legislative package that also includes the replacement of the existing EU Trade Mark Directive (Directive 2008/95/EC of the European Parliament and the Council).

    OHIM is the EU’s largest decentralised agency. It is entirely self-financed, receiving no funding from the EU Budget. As well as managing the Community trade mark and the registered Community design (RCD), it works in collaboration with the EU national and regional IP offices to build a stronger IP system across the EU for the benefit of users.

  • IP Consulting Ltd. - Intellectual Property Consulting Agency
  • Landmark-TP
  • Ivan Georgiev - Rembrand
  • Global IP Attorneys - The world's leading address guide for patent,  trademark, copyright, intellectual property and IP attorneys. In just a few steps you can find your agency for registration and protection of your intellectual property, patent, design, copyright or trademark.
  • The Professional Sector Network is a referral and networking group that caters exclusively to leading firms with a history of excellence in the business, advisory and investment sectors.
  • IP Basis®

  • IP Guide®

  • Become our partners