Mexico: Amendments introduce new rules for international trade mark registrations

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: Amendments introduce new rules for international trade mark registrations

It is widely known that amendments to the Mexican Law of Industrial Property which have an impact on trade marks came into full force on August 10 2018. Especially relevant is the Declaration of Effective Use (DOU) to preserve trade mark protection. A first DOU is provided for those registrations granted from August 10 2018 and must be filed within three months of the third anniversary of the date of grant of the registration. Failure to file the DOU will cause the registration to lapse. In turn, for renewal purposes, a DOU must be filed. In both cases the DOU's must specify the goods/services for which the trade mark is effectively in use in Mexico. Protection will remain only for those specific goods or services.

With respect to international registrations designating Mexico relevant rules have been published in the Official Diary of September 6 2018. According to them, a DOU must be filed at the Mexican Institute of Industrial Property (IMPI) within three months of the third anniversary of the national registration including the list of goods/services on which the mark is effectively used in Mexico. Regarding renewals, the rules provide that once the titleholder of the international registration has been notified of the renewal from WIPO, the titleholder must file the DOU within the next three months specifying the goods/services on which the trade mark has been effectively used in Mexico provided that the national registration has been granted for at least three years.

There will not be an official action requesting the titleholders of the international registrations to file the DOU, so it is convenient to appoint a Mexican lawyer to monitor deadlines.

mnr.jpg

Mauricio Narváez


OlivaresSan Ángel

more from across site and SHARED ros bottom lb

More from across our site

Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
The England and Wales appeals court handed down its judgment just seven working days after hearing the trademark dispute involving pharma company Merck
A host of law firms from across Europe and beyond helped bring the streaming technology dispute to a close
Hugues Derème, director general of the Benelux IP Office, unveils his vision for the region, how to improve IP awareness, and use of AI
A copyright win for AI firm Anthropic and a new executive order against law firm Jenner & Block were also among the top talking points this week
A principal at Schwegman Lundberg & Woessner explains how AI tools, including DeepIP, can position the firm to help clients
The firm explains why AI-empowered data analytics could make it a more efficient advocate for its clients
Penelope Aspinall, of IP wellbeing charity Jonathan’s Voice, explains why managers should take a three-tiered approach to looking after workers’ mental health
Heath Hoglund talks about the value proposition of patent pools and why it went ahead with its first-ever series of pool meetings in China
Gift this article