Renewing Trademarks in Mexico

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

(This is an updated post following the May, 2018, amendments to the trademark legislation in Mexico. All trademark renewals filed after August 10, 2018, must comply with the amended provisions, regardless the date of registration).

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.

However, the statute demands the trademark owner to file a declaration of actual and effective use of the trademark after the third year of issuance of the registration and, again, with each renewal. The trademark owner should list in the declaration only the goods or service that have been actually identified in Mexico with the registered trademark, and the scope of protection provided by the trademark registration would be limited to the goods or services stated in the declaration of use.

If the trademark owner fails to file the statement of use after the third year of registration, or when renewing, it would result in the cancellation of the registration. This requirement is demanded for domestic trademark registrations and for International Trademark Registrations.

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, 2009, the registration expires on August 1, 2019; the renewal application may be filed between February 1, 2019 and February 1, 2020 (arguably, it could be February 2, 2021). No additional terms are available.

Tricky issues concerning the renewal of trademark registrations

(1) Declaration of use

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 trademark lawyer or agent must state, under oath, the goods or services actually and effectively identified with the registered trademark to be renewed.

The scope of the trademark rights will be limited to the goods or services stated in the declaration of use.

In the case of national trademark registrations, the declaration of use is filed simultaneously with the renewal application.

In the case of International Trademark Registrations, the statement of use has to be filed within a three-month term after WIPO notifies the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) about the renewal of the international trademark registration, at the window of the MPTO by a lawyer or agent authorized with a written power of attorney. The owner has to file one statement of use (and fee) per Class.

The MPTO will not issue a reminder or request for the declaration of use. If the declaration of use is not filed on time, the effects of the international trademark registration  will cease in Mexico.

The amended law does not allow renewing registered trademarks that have not been used to identify at least one of the products/services listed in the registration, even if the trademark has been used to identify other goods or services listed in a different trademark registration.

For that reason, many Mexican lawyers and agents (including me) will ask their clients for a written statement about the use of the trademark.

(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 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 “per 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. The lack of published precedents about the validity of underpaid renewals does not mean that there is no risk, but my experience is that the courts have refused to acknowledge a trademark registration as abandoned because the renewal fee was calculated “per registration” instead of “per class”.

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

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