1.- Proofs of use of trademarks have been abrogated. This provision includes also the proof of use due the third year as of grant.
2.- The renewal term for registrations has been extended to ten years as of the filing date and the proof of use has been substituted by a simple sworn declaration stating that the mark is being used and that use of the mark has not been suspended for more than three consecutive years. This declaration must accompany the renewal petition. No actual evidence of use has to be submitted to the authorities with the renewal petition.
3.- The non-use of a trademark may be permitted if justified causes are given to the Mexican Trademark Office. Such causes, for instance, may be a prohibition of importation of the goods covered (which considering the present trends towards a fully open economy in Mexico would be very improbable) or force majeur causes, such as natural disasters, unavoidable accidents as fire, explosions, and the like.
4.- Trademarks may be used in a different form from that in which they were registered, provided that the modifications do not change the essential characteristics of the trademark.
5.- Licenses for the use of trademarks must be recorded before the Mexican Trademark Office in order to be enforceable against third parties.
USE OF TRADEMARKS: The practice recommended by our firm in connection with trademark registrations which are not in use or the use of which has been suspended for a period of three or more years, is that a new application be filed in order to secure continuity in the protection. This new application must be filed shortly before the end of the expiry of the three year non-use term.
For registrations for which the mark is in use or for which use has not been interrupted for periods of more than three consecutive years, we do not recommend to spend time and money in filing proofs of use every three years since, as mentioned in Item 1 above, they have been abrogated. In the remote case that a third party (who must fully prove to the Mexican Trademark Office to have juridical interest) applies for a cancellation action against an apparently non-used registration, the proofs of use of the mark which are obviously in the possession of the trademark owner and that will then have to be filed before the Patent Office will be absolutely sufficient to stop said cancellation action. Then and only then the proofs of use including sales and samples will have to be filed.
The content of this article is intended only to provide general guidelines related to this particular matter. For your specific circumstances, full specialist advise is recommended.