Mandatory declaration of use after 3 years of registration and other important changes in Mexico’s trademark law

 

Substantial amendments to the Mexican Trademark Law (MTL) came recently into force.

They represent the biggest change to the MTL after the 1994 reform produced as a result of the entry into force of the North American Free Trade Agreement (NAFTA).

By introducing modern forms of protection, the new legal framework will strengthen Mexico’s industrial property system and ensure greater legal certainty to trademark owners.

The most relevant changes, which will affect both national applications and international applications filed through the Madrid Protocol, are as follows:

 

  • Use declaration under oath A declaration of actual and effective use will be required three years after registration. The lack of submission of such a declaration will be a cause of abandonment of the trademark. A declaration will also be required at the time of renewal.
  • No defensive marks Renewal of trademark registrations in certain classes will no longer be possible based on the use made of the same mark registered in other classes.
  • Sound and olfactory marks The definition of trademark has been modified in order to include protection to the so called non-traditional trademarks, such as sound and olfactory marks. Protection of holograms is also foreseen.
  • Trade dress Protection of trade dress is now possible through trademark registration.
  • Acquired distinctiveness A descriptive or generic mark may be successfully registered if its owner can prove that it has acquired distinctiveness through use.
  • Certification marks In line with the EU legislation, protection of certification marks is now possible.
  • Class headings From now on, it will be necessary to clearly indicate the goods and services for which the trademark will be used. Class headings are no longer allowed.
  • Letters of consents and coexistence agreements They are now allowed to overcome prior rights (with the exception of cases of double-identity).
  • Bad faith It has been included as a ground for opposition and invalidation.
  • Binding oppositions With the aim of providing more legal certainty to trademark owners, oppositions will become binding for the Mexican Trademark Office (IMPI), which means that it will have to render grounded and justified decisions based on the merits of each case.

 

By Len Hernández, Trademark & Design Attorney at GEVERS