Renewing associated trade marks

July 9, 2010

BY MAURICIO NARVÁEZ

A trade mark registration in Mexico is in full force for a term of 10 years from the filing date. After that time it is necessary to request renewal before the Mexican Institute of Industrial Property (IMPI). According to the Law of Industrial Property (LPI), to proceed with this action the corresponding trade mark must have been used in Mexico within the last three years. The question arises as to what can be done when a trade mark has not been used in that time and registration is due for renewal.

An exception set out in the LPI allows the renewal petition to be filed based on the effective use of the same trade mark registered in a different international class (base registration) if it is indeed in use on goods falling within this other class. In many cases, this is the only way to maintain a trade mark registration which was filed for protection purposes.
Trade marks registered in only one international class and not used within the three years prior to renewal and which do not have other identical registration that could support their use (as explained above) will be considered to have lapsed.

 

However, a solution may be found if the owner of the trade mark has a registration for a similar trade mark that is in use. Article 128 of the LPI admits the use of a registered trade mark with modifications provided that these do not alter its distinctive character. Therefore, if the trade mark has slight differences to the one that is not used, it might support its renewal. Of course to proceed on this basis, it would be necessary to evaluate the differences between the trade marks to determine the renewal possibilities.

There is a third option when proceeding with the renewal of a trade mark registration in Mexico and that is to present justified reasons for non-use of the trade mark at the time of petitioning renewal. However, such reasons are confined to import restrictions or government requirements applicable to the goods or services covered by these restrictions. Such reasons would be studied by the IMPI, which at the end of the process would decide if they qualify as justified or not. It should be noted that renewals are not often obtained following this procedure.

For the reasons given above the use of a registered trade mark is recommended to avoid its lapsing. However, if such use is not possible, it is important to keep in mind the above-mentioned options, as they may help to maintain a registered trade mark and in consequence, to preserve the industrial property rights that have been acquired.
Source: Managing Intellectual Property Magazine, Feb 2002.