INTERNATIONAL REGISTRATIONS EXTENDING PROTECTION TO MEXICO
Dear Clients and Friends,
Through Notice No. 32/2024, the World Intellectual Property Organization (WIPO), based on a communication sent by the Mexican Institute of Industrial Property (IMPI), provides clarification regarding the deadlines for holders of international registrations that have extended protection to Mexico to submit the declaration of actual and effective use of their trademarks under the following terms:
The declaration of actual and effective use of the trademark must be submitted:
Within three months from the date of the third natural year following the granting of protection to the trademark in Mexico, provided that the national registration certificate issued by the IMPI is dated after August 10, 2018.
Failure to submit this declaration will result in the automatic expiration of the registration without the need for a formal declaration by the IMPI.
Within three months after the publication in the WIPO Gazette of the renewal of the international registration carried out by WIPO’s International Bureau, provided that the granting of protection in Mexico has been in effect for at least three years.
Failure to submit this declaration will prompt the IMPI to require the holder to remedy the omission within two months. If the holder fails to comply within the specified period, the registration will automatically expire without requiring a formal declaration by the IMPI.
In both cases, if the declarations of use are not submitted within the specified deadlines, the IMPI will notify WIPO of the invalidation of the effects of the corresponding international registrations, in accordance with Rule 19 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
This notice provides legal certainty regarding the deadlines for submitting the declaration of actual and effective use.
As always, Valdés Morán y Asociados remains at your service for any inquiries related to this information.
