Renewing Trademarks in Mexico

December 15, 2008 at 11:00 AM Leave a comment

The renewal of trademark registrations is an important aspect of the maintenance of any IP portfolio. Making the right decision about renewing, or not renewing, allows the proprietor to maximize the value of its trademarks, or cut unnecessary expenses.

In this post, I am explaining the basic aspects about renewing trademarks in Mexico, calling the reader’s attention to two issues that should be carefully considered when the trademark owner decides to renew a trademark registration in our country.

The basics about trademark renewal in Mexico

A Mexican trademark registration is valid for a ten years term, counted from the filing date in Mexico, regardless the priority, date of registration or date of first-use. The registration may be renewed an unlimited number of times for ten years terms.

As you may know, Mexico does not allow multiple class applications, so it is usual for an entity or individual to own several trademark registrations for the same trademark in different classes. Further, Mexico is less restrictive than other countries (mainly the United States) about the description of articles or services that may be listed in a trademark application, so the applicant is allowed to include in the application products and activities that it has no actual intention to identify with the mark, provided that they belong to the same class.

In these cases, Mexican law provides that a trademark must have been used on at least one of the goods or services covered by, at least, one of the existing registrations for that trademark, in order to allow the renewal.

For example, if I register the trademark ARTURO REYES for ‘legal services and clothing rental’ (International Class 45), ‘cosmetics and detergents’ (International Class 03) and ‘education’ (International Class 41), I would have to file three different applications and eventually obtain three separate registrations. If I use the trademark to distinguish legal services only, said use would be enough to allow me to renew the trademark registrations in Classes 03, 41 and 45 with the full original coverage.

The window to renew a trademark registration lasts twelve months. It starts six months before the date of expiration of the registration and ends six months after said date. For example, if the filing date of a trademark registration is August 1, 1998, the registration expires on August 1, 2008; the renewal application may be filed between February 1, 2008 and February 1, 2009 (arguably, it could be February 2, 2009). No additional terms are available.

Tricky issues concerning the renewal of trademark registrations

(1) Use requirement.

Although it is not necessary to file a specimen of the trademark or a sample of the branded product when filing the renewal application, the statute demands the trademark lawyer or agent to state, under oath, that the registered trademark to be renewed is being used and that the use in Mexico has not been interrupted for three consecutive years or more.

Trademarks that have not been used in Mexico on at least one of the products or services covered by any of the existing trademark registrations for that mark should not be renewed, in theory.

Mexico does not demand continuous use, thus only an interruption of the use of the trademark in Mexico for three consecutive years or longer would obstacle the renewal. In the same sense, if the trademark owner started using the registered trademark after the third anniversary of the date of registration, such lack of use for the first three years would constitute a bar for the renewal of the trademark (in theory), even if the mark was later continuously used.

In my opinion, the statute is quite inconsistent. On one hand it allows the renewal of trademark registrations for goods or services that may have never been identified with the trademark (if there is use in another Class where a registration for the same mark exists) and, at the same time, it forbids to renew a trademark that might have been used because there is a three years gap of non-use.

Further, the use of the registered trademark in one International Class is valid to allow the renewal of other registrations for the same trademark in other International Classes, even in absence of use; but arguably it would not be valid to defend a trademark registration in an International Class different form the one there has been use, against a cancellation action for lack of use for three consecutive years*.

Making a statement under oath regarding facts that are not true could be a federal crime in Mexico, and the criminal liability could involve both the trademark lawyer and the trademark owner. For that reason, many Mexican lawyers and agents (including me) will ask their clients for a written statement about the use of the trademark, to minimize the risks of renewing trademarks that have not been used.

Notwithstanding the above, it is important to say that I am not aware of any case where the district attorney started an investigation because a false statement regarding the use of a renewed trademark, although it does not mean there would be no risk, especially if the adversary is hostile.

 

(2) Renewal fee

 

As I stated above, Mexico does not allow multiple-class applications. However, because of the change from the old National Classification to the International Classification and the later amendments of the International Classification, the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) has unilaterally reclassified the products or services of the original description, sometimes creating multiple-class registrations.

For example, old trademark registrations in National Class 46 that covered ‘food and its ingredients’ were later reclassified in International Classes 01, 05, 29, 30 and 31. Similar reclassifications have taken place lately with the amendments to the International Classification or due changes in the directives of the MPTO (i.e. under the Seventh Edition of the Nice Classification, Mexican authorities used to classify retail and wholesale services in International Class 42 instead of 35).

The regulation that stipulates the government fee, provides that it shall be paid ‘per class’. Notwithstanding the above, most trademark lawyers in Mexico pay the government fee ‘per registration’.

The difference of calculating the fee ‘per registration’ or ‘per class’ is irrelevant in most cases, given that most trademark registrations list articles or services of only one International Class. However, there are a significant number of trademark registrations that have been reclassified and now explicitly include products or services of more than one International Class.

As stated above, the current implicit directive of the MPTO (there is no written document) is that the renewal fee should be paid per registration, in spite of the explicit provision regarding the payment for class stated in the regulation of government’s fees. Of course, if a trademark owner calculates and pays the renewal fee per class instead of per registration, the MPTO would accept the payment and renew the trademark registration, but there would be no refund.

The government fee for renewing a trademark registration is relatively high, thus calculating it ‘per registration’ instead of ‘per class’ is quite attractive (about $225.00 USD per registration instead of $225.00 USD per each class that might be included in the registration).

Since the MPTO has never objected the calculation of the renewal fee ‘per registration’ and there are no published precedents about the invalidation of a trademark renewal, most Mexican trademark lawyers feel safe with the practice of paying a fee lower than the one explicitly stipulated in the regulation for multiple-class registrations. However, the lack of published precedents about the validity of underpaid renewals does not mean that there is no risk.

There are non-published rulings of the Tribunal Federal de Justicia Administrativa or Federal Court of Administrative Affairs (FCAA) and a Federal Court of Apeals stating that the renewal of a trademark registration with an incorrect calculation of the government fee could be invalid, thus the registration may be considered as abandoned. Although the FCAA has stipulated that such a declaration of abadonment should be issued by the MPTO, it is unclear what would be the procedure with the MPTO  to obtain the invalidation of a renewal.

Alternatives for the payment of the renewal fee for multiple-class registrations

If calculating the renewal fee ‘per class’ instead of ‘per registration’ results in an extremely high fee, my suggestion would be trying to reduce it by dropping one or more Classes from the registration to be renewed.

As long as there are no binding precedents regarding the validity of renewals where the fee was calculated ‘per registration’, the holders of multiple-class registrations have to choose between paying a higher (or much higher) renewal fee to stay in the safe side, or paying a lower fee and assume the risks. Certainly, we have to take into account that the actual risks of an invalidation action against the renewal of a registration seem low, at least for the time being. Therefore, as long as it is an informed decision and the trademark owner is aware of the risks, it would be reasonable to choose calculating the renewal fee ‘per registration’.

* The Highest Chamber of the Federal Court of Tax and Administrative Affairs ruled that in the case of well-known trademarks, the use of the mark in one International Class is enough to defend the validity of the existing registrations for the same trademark in other International Classes against a cancellation action, even if there has been no use in these classes. Precedent V-TASS-239, R.T.F.J.F.A. Fifth Era, Year VI, No. 62. February 2006, page 283.

 

 

 

Entry filed under: Trademark law. Tags: , , , , , , , , .

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