By Paloma Contreras, CALDERON & DE LA SIERRA, S.C.
The Declaration of Use (Declaración de Uso) is an essential legal requirement for trademark holders in Mexico. It serves as a formal declaration that a trademark is actively being used in commerce within the country. This article aims to provide a detailed overview of the Declaration of Use in Mexico, its significance, requirements, and implications for trademark owners.
Contents
1.What is the Declaration of Use?
3. Importance of the Declaration of Use
4. When is the Declaration of Use Required?
5. Requirements for Submitting a Declaration of Use
6. Consequences of Non-Compliance
7. Best Practices for Trademark Owners
1. What is the Declaration of Use in Mexico?
The Declaration of Use is a document submitted to the Mexican Institute of Industrial Property (IMPI) that certifies a trademark’s use in relation to the goods or services for which it is registered. This declaration is particularly relevant for trademarks that are registered and in active use, as it helps maintain trademark registrations valid and in force.
2. Legal Framework for Declaration of Use in Mexico
The Declaration of Use is governed by the Mexican Industrial Property Law (Ley Federal de Proteccion a la Propiedad Industrial), which mandates that trademark owners must provide proof of use within the three months following the third year after grant, with no extension available. Failure to comply can result in the cancellation of the trademark. Also check the article about copyright in Mexico.
3. Importance of the Declaration of Use in Mexico
1. Preservation of Rights: Submitting a Declaration of Use in Mexico helps preserve trademark rights and prevents cancellation due to non-use.
2. Market Presence: It signals to the market that the trademark is actively used, enhancing brand visibility and recognition.
3. Legal Protection: By demonstrating use, trademark owners strengthen their legal position against potential infringements.
4. When is the Declaration of Use Required?
- Post-Registration: Trademark owners must submit the Declaration of Use within three months following the third year from the date of registration.
- Renewal Period: Additionally, declarations are required during the renewal process, typically every ten years.
5. Requirements for Submitting a Declaration of Use in Mexico
- Formal Submission: The Declaration must be filed with IMPI.
- Fees: A fee is applicable for the submission, which varies depending on the number of classes covered by the trademark.
6. Consequences of Non-Compliance
Failing to submit the Declaration of Use in Mexico can lead to:
- Cancellation of the Trademark: IMPI may cancel the registration if proof of use is not provided within the stipulated timeframe.
- Loss of Brand Rights: Trademark owners risk losing exclusive rights to their mark, leading to potential market disadvantages.
7. Best Practices for Trademark Owners
1. Maintain Records: Keep detailed records of all activities related to the trademark, including marketing, sales, and distribution efforts.
2. Monitor Deadlines: Stay informed about deadlines for submitting the Declaration of Use to avoid unintentional cancellations. If no “real and effective” use of the trademark has taken place in Mexico when deadline to file a Declaration of use, trademark owners may have the option to file new application for the mark before the non-extendable deadline, to avoid the risk of a third party securing an earlier filing date for the mark.
3. Seek Professional Advice: Consult with intellectual property attorneys to ensure compliance with all legal requirements and to address any complexities in the process.
8. Conclusion
The Declaration of Use in Mexico is a critical aspect of trademark management. By understanding its importance and adhering to the legal requirements, trademark owners can safeguard their rights and strengthen their brand’s market position. Proactive measures, including maintaining comprehensive records and seeking professional assistance, can ensure successful compliance with the Declaration of Use in Mexico.
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