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