On August 10, 2018, one of the most awaited Industrial Property Law amendments entered into force. As in all modifications, various legal statutory provisions were added, that many could consider as a limitative and coercive amendment of enshrined and previously acquired rights by individuals.
As it happens in amendments of law, there are statutory provisions which confer advantages and rights in certain areas and/or situations to some individuals. There are also some other provisions that limit and coerce previously acquired rights for other individuals and therefore are a disadvantage, as in the case of the interposed obligation to trademarks' registration owners with respect to what is established by Article 128 of the Industrial Property Law in force, related to the Declaration of Use that must be submitted before the Mexican Institute of Industrial Property on every trademark registration so as to avoid having such registration cancelled.
The Declaration of Use to which the amendment refers to, consists in the confirmation that trademarks' owners must file before the Mexican Institute of Industrial Property, through a pre-determined form in which the trademark holder confirms under oath the current use of its protected trademark for some or for all the goods or services for which the protection was granted, with no need to submit any kind of evidence. This Declaration of Use is to be submitted in two different circumstances. The first is that the Declaration of Use is to be submitted at the third-year grant anniversary of only those registrations that were granted on August 10, 2018 and onwards (this declaration must only be submitted once). The second is that this Declaration must be filed at the time of the trademark renewal every 10 years. This Declaration must be filed for all renewals made since August 10, 2018. Failure to comply with this obligation implies that the trademark registration will become abandoned.
The issuance of a registration certificate of a distinctive sign by the Mexican Institute of Industrial Property not only corresponds to the authorization to a person for the exclusive use of a trademark in Mexican territory and to the right to prevent third parties to use and exploit a trademark. It also corresponds to a property title of an intangible good as a trademark is, implying a property right with the economic benefits that this entails for its owner.
Certainly, the main objective of seeking to obtain the registration of a trademark lies in the interest of some individuals to protect the manufacture, marketing and exclusive use, and to identify their products or services in the market. However, the consequences of a trademark registration penalty on which the use is not declared not only affects its owner in the legal field by leaving it devoid of any right, but also has economic and commercial effects by depriving it of the possibility to legally and actively participate in the market with the sale of products and/or services to consumers, especially with whom said trademarks' owners have business and previously signed agreements, causing incalculable damages.
Is the cancellation declaration of a registration due to the omission of filing the declaration of use over an active trademark in the market considered as legal? How legal or illegal is it to deprive the owner of a property right previously acquired because of the lack of compliance to miss the filing of the Declaration of use? Does the lack of a secondary action as is to declare the use of a trademark has the legality of leaving a principal right without effect? These questions should motivate the search of possible administrative and legal resources available for trademark owners to safeguard their IP rights and to avoid affecting their patrimony, at least for those trademark registrations granted before August 10, 2018 under the Mexican Industrial Property Law prior to this amendment.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.