Attorneys and trademark professionals managing International Registrations under the Madrid System should be aware of an important distinction when Mexico is designated: WIPO administers the international registration, but Mexican Declarations of Actual and Effective Use must be handled directly before the Mexican Institute of Industrial Property
Attorneys and trademark professionals managing International Registrations under the Madrid System should be aware of an important distinction when Mexico is designated: WIPO administers the international registration, but Mexican Declarations of Actual and Effective Use must be handled directly before the Mexican Institute of Industrial Property (IMPI). WIPO does not accept or process the Mexican Declaration of Use on behalf of the trademark owner. IMPI has expressly communicated this requirement to WIPO and published the applicable procedures for holders of international registrations designating Mexico.
This creates a significant portfolio-management issue for international trademark owners. A centralized Madrid System docket may accurately track the international registration and its WIPO renewal deadline while failing to capture a separate Mexican deadline arising from the local Declaration of Use requirement. Missing that local deadline can result in the loss of protection in Mexico, even though the international registration itself may remain active before WIPO.
For international registrations designating Mexico, there are two distinct Declaration of Use milestones that trademark professionals should monitor.
A) First, the three-year Declaration of Actual and Effective Use.
Where the applicable Mexican requirement applies, the declaration must be submitted directly to IMPI during the three months following three calendar years from the date on which protection was granted in Mexico. IMPI has specifically indicated that this requirement applies where the national registration certificate is issued after August 10, 2018. The relevant Mexican “DATE OF GRANT” can be verified through IMPI’s trademark database using the applicable national file or registration number.
The declaration must identify the specific goods or services for which the trademark is actually and effectively used. If the applicable declaration is not filed within the statutory period, the Mexican protection lapses by operation of law.
B) Second, the Declaration of Use following renewal of the international registration.
The renewal of an International Registration is handled centrally through WIPO and extends the international registration for another ten-year period. WIPO's Madrid System provides for centralized renewal, including a six-month grace period after expiration subject to the applicable surcharge.
Mexico, however, imposes an additional local requirement. Where the Mexican protection has been in effect for at least three years, the holder must submit a separate Declaration of Actual and Effective Use directly to IMPI within three months following publication in the WIPO Gazette of the renewal of the International Registration.
This distinction is critical for international portfolio managers. Renewing the International Registration through WIPO does not, by itself, complete the Mexican Declaration of Use requirement. The WIPO Gazette is the official publication of the Madrid System and contains information concerning renewals and other changes affecting International Registrations.
Accordingly, Mexican designations should not be managed exclusively through a centralized WIPO renewal docket. The international registration and the Mexican designation should be monitored as interconnected—but procedurally distinct—assets.
For foreign trademark owners, the practical solution is a registration-by-registration review of the Mexican designation, including the applicable Mexican date of grant, the status of protection before IMPI, the goods and services covered by the Mexican protection, and the deadlines triggered by any subsequent WIPO renewal.
Through declaraciondeuso.mx, we provide specialized monitoring and local procedural support for Declarations of Use associated with Mexican trademark registrations and International Registrations designating Mexico. Our objective is to bridge the operational gap between the centralized Madrid System and the local requirements imposed by Mexican law.
WIPO manages the International Registration. IMPI manages the Mexican requirement. Your trademark portfolio needs to account for both.