Learn what steps you need to take to maintain the validity of your trademark registration in Mexico, especially the renewal application before the Mexican Institute of Industrial Property (IMPI). This detailed guide covers deadlines, IMPI requirements, and rules for international registrations (Madrid Protocol).
Introduction
A trademark registration grants its owner the exclusive right to use the trademark in Mexican territory. However, trademark is not permanent and requires active management to maintain it and ensure its enforceability against third parties. At COSIO Abogados, we provide this guide so that foreign firms, in-house legal advisors, and business owners understand the basic concepts for keeping their trademark registrations valid in Mexico.
How long is a trademark valid in Mexico?
Due to changes in industrial property legislation, the validity of a trademark registration can vary:
- Ten years from the filing date.
- Or, ten years from the registration date.
It is essential to determine the exact expiration date of the trademark registration to avoid confusion that could result in the registration’s expiration and the loss of rights.
Deadlines for Requesting Renewal
Mexican law establishes a broad period for requesting the renewal of a trademark registration, divided into the ordinary period and the grace period:
• Ordinary Period: A trademark registration renewal can be requested up to six months before the expiration date.
• Grace Period: If the renewal request is not submitted on time, there is a six-month period after the expiration date to rectify the situation.
If the renewal request is not submitted within these deadlines, the registration will automatically and irrevocably expire. The Mexican Institute of Industrial Property (IMPI) does not issue official communications to request or remind applicants of this procedure.
Declaring the use of the trademark in Mexico’s commerce
In Mexico, renewal is not a simple administrative payment process and must be accompanied by a declaration of effective use in commerce.
The trademark holder must declare, under penalty of perjury, that the trademark is actually and effectively used for the goods or services it protects.
Failure to make this declaration will prevent the successful renewal of the registration.
It is possible to limit or eliminate any goods or services protected by the trademark registration that are not used or are no longer relevant.
Legal Representation for Foreigners
For trademark holders residing abroad, it is a legal requirement to have local representation in Mexico to file renewal applications.
It is recommended that this representation be provided by an attorney with experience in intellectual property law, who can ensure that deadlines are met and that the declaration of use is correctly formulated to avoid future legal vulnerabilities.
Summary of Key Points
• Trademark registration term: 10 years (variable depending on the filing or registration date).
• Deadline for filing the renewal application: 6 months before and up to 6 months after expiration.
• Additional obligation: File the declaration of use simultaneously.
• Trademark registrations automatically lapse and lose their validity if the owner does not file the renewal application within the deadline,
Is your trademark about to expire?
At COSIO Abogados, we have the necessary experience to manage the renewal of your intangible assets and ensure your presence in the Mexican market remains strong.
Do you have any questions? We would be happy to assist you. Send us an email to dario@cosio.mx and we will contact you to help you renew your trademark registrations.
