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Declarations of use.

Legal Overview of the Declaration of Use (DOU) in Mexico and Practical Issues Affecting International Trademark Registrations.

BY GERARDO BEZARES.

Welcome to our latest update on trademark regulations in Mexico.

This edition focuses on the Declaration of Use (DOU) requirement and the challenges associated with international trademark registrations via the Madrid Protocol.

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Legal Overview of the Declaration of
Use (DOU) in Mexico

The Declaration of Use (DOU) is a crucial legal requirement for trademark holders in Mexico, introduced in 2018 and maintained under the Federal Law on the Protection of Industrial Property (LFPPI) issued in 2020.

This requirement significantly impacts brand owners.

The DOU mustbe submitted within the third year from the date of registration for those trademarks granted on or after August 10, 2018, and during the renewal process.

The responsibility to file the DOU falls on the trademark holders, their legal representatives, or authorized attorneys in Mexico. The filing process involves specifying the products or services covered by the trademark and paying the necessary fees.

For Madrid Protocol registrations, the DOU must be filed directly with IMPI through an authorized agent or representative in Mexico.

Failure to correctly submit the DOU results in the automatic expiration of the trademark registration without any official declaration from IMPI.

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Practical Issues Affecting International Trademark Registrations

One of the main problems related to fulfilling this obligation is that the international registration date shown by different databases usually matches the WIPO filing date, not the actual date of national registration at the time of being granted by IMPI. The Madrid Protocol aims to eliminate the need for local attorneys unless there are objections, leading to many international registrations lacking local representation.

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doumexico@betheip.mx

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Practical Issues Affecting International Trademark Registrations

Users of the Madrid system worldwide may struggle to determine the exact date IMPI
granted the registration, complicating the management of the DOU deadline. They might
not even be aware of the specific local registration number, which is commonly confused with the local serial number.

According to the LFPPI, failure to file the DOU leads to automatic expiration of the
registration without formal notification from IMPI. Since IMPI does not consistently inform WIPO of the expiration, the registration appears active in WIPO’s system, leaving foreign attorneys unaware of the actual status, and allowing third parties to obtain the registration of confusingly similar or identical trademarks whose invalidation should be pursued, incurring much higher fees.

Finally, as the legal obligation of submitting declarations of use extends to those trademarks whose registration is being renewed, when IMPI receives a renewal application through the WIPO, an office action requesting the submission of the DOU is issued by means of the local trademarks gazette, which, again, usually goes unnoticed by foreign attorneys, and many registered trademarks are lost due to the failure of responding to this office action.

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Legal Solutions and Recommendations

Our team can help you with smart legal solutions and recommendations, such as:

We can help your firm re-register trademarks in Mexico, securing protection in approximately five months (in smooth prosecution) compared to the 18 months typically taken by IMPI through the Madrid Protocol.

1.Our deep knowledge of the IMPI organizational
structure and our proper handling of the cases enables us to efficiently urge the authority to communicate the expiration status of international registrations to WIPO, facilitating the re-designation of Mexico through the Madrid system.

2.As local experts in Mexican practice of IP, we can offer comprehensive services to monitor and ensure timely submission of DOUs, maintaining the validity of the trademark registrations owned by your clients.

Schedule Free Consultation
doumexico@betheip.mx

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Conclusions

Understanding and navigating the legal intricacies of DOU requirements and addressing the challenges of international trademark registrations via the Madrid Protocol are crucial for preserving trademark rights in Mexico.

Legal representation is essential for managing compliance, ensuring proper communication between IMPI and WIPO, and safeguarding brand integrity for both international and domestic clients.

IMPI’s lack of previsions in the implementation of the Declarations of use has regrettably put in risk the IP rights of companies worldwide and the reputation of Madrid System users.

Ready to take control of your brand portfolio’s future?

Do not wait – ensure compliance with the Declaration of Use today! Whether you

are a trademark owner or representative we can help you file locally all necessary

documents to ensure your trademark is protected in Mexico.

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