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  • Writer's pictureCristina Barragán Silva | L.D

Declaration of real and effective use of a trademark


What is the declaration of real and effective use of a trademark? Since when is it mandatory to file a declaration of use? What happens if I fail to file the notice of declaration of real and effective use? Is there any cost for this notice?


If you have a registered trademark, you will surely ask yourself some of the above questions, as this new obligation started on August 10, 2018.


What is the declaration of use?

Article 233 of the Federal Law for the Protection of Industrial Property states, “The trademark must be used in national territory, just as it was registered or with modifications that do not alter its distinctive character.” The declaration of use is a procedure that is carried out through the Mexican Institute of Industrial Property (IMPI) and that all holders of a trademark that was granted as of August 10, 2018, or after this date are required to file the purpose of this notice is to corroborate that the registered trademark is indeed being used and those that are not, to release them and open the possibility that someone else can use or register them in their favor.


Since when is it mandatory to make a declaration of use?

As already mentioned in the previous paragraph, this obligation came into force on August 10, 2018, and this notice is filed 3 three years after the trademark title is granted, during the following three months, this means that all those trademarks that were given after August 10, 2018, in this year 2021 will be the first trademarks that must make their declaration of real and effective use, this opens the door to another question: What happens with those that were granted before that date?


The answer is: Nothing, the trademarks granted before that date are not obliged to file this declaration, those trademarks are still in force until the term of 10 years, which is the period for which the authority protects a trademark, a period that can be extended for an equal period if renewal proceedings are filed and whose subject will be discussed at another time.


What happens if I fail to file the notice of declaration of actual and effective use?

Well, what is to be expected in case this notice of declaration of use is not filed, three years and up to three months after the trademark or ownership have been granted, it expires, and it is free for someone else who has an interest in it to register it and use it in their favor, losing the initial owner any right to claim any benefit on it, imagine the impact that this notice has!


if your trademark is active and is being used and you have invested in design, marketing, web page, advertising, and your clients already identify you through it, if by carelessness or omission you forget to file this declaration, the impact could be catastrophic.


If you have failed to file this notice and wish to continue with your trademark, which is already registered, it will be necessary to re-file the trademark application as if it had not been done before.


Is there any cost for this notice?

The answer to this question is yes, the fee that the Mexican Institute of Industrial Property (IMPI) currently contemplates is $1,143. 37 pesos VAT included (consult the requirements here), price that can be modified by the authority with previous notice; it is needless to add that if this payment of rights is not made, the notice of declaration of real and effective use will not be considered as filed.


As you may have noticed, doing it in the right way this obligation can be complicated if you do not have the knowledge on the subject and may affect the ownership of your trademark. We recommend you approach a professional to achieve a successful process, approach Teran Rojas y Asociados who will gladly help you in this process.

 

Published on November 09th, 2021.


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