On 22 March 2018 the Mexican Senate approved a Decree amending certain articles of the present Industrial Property Law and introducing new trademark provisions. One important change to the law relates to the requirement to lodge Declarations of Actual and Effective Use (DOU) of a registered trade mark.
The DOU must be filed within three (3) months of the third anniversary of the grant of registration. The requirement will apply only to trademark registrations that were granted as from 10 August 2018. For example, for a registration that was granted on 11 August 2018 the DOU must be filed anytime between 11 August 2021 and 11 November 2021.
Other important provisions of the Decree are:
- Smell marks, sound marks, and movement marks can now be protected in Mexico.
- Class headings will no longer be deemed to cover all goods or services in a class. Applicants must specify goods and services in accordance with the Nice Classification.
- Consent and co-existence agreements may overcome prior rights, unless the prior marks are identical and cover identical goods and/or services.
- Bad faith will be a ground for oppositions and invalidation actions.
For further information concerning the amendments to the Industrial Property Laws in Mexico or for assistance with protecting your brand in Mexico, please contact us.