It has been nearly seven years since the Mexican Congress approved significant changes to the country’s Industrial Property Law, with the aim of modernizing its trademark system and aligning it with key aspects of other countries that are part of the Madrid System.

One of the most important amendments was the introduction of the requirement to file a use declaration in order to maintain the validity of a registered trademark in Mexico.

When must the use declaration be filed?

There are two main moments in the trademark lifecycle when a declaration of actual and effective use must be filed before the Mexican Institute of Industrial Property (IMPI):

1. Three years after registration is granted by IMPI.
2. At the time of renewal of the trademark.

When a trademark is filed directly with IMPI, there are usually no issues controlling these deadlines, since the application is handled by a Mexican legal representative—such as our team at Herrero & Asociados México—who monitors the date of registration and renewal to ensure compliance.

However, difficulties arise when the trademark is filed via an international registration designating Mexico, as there are certain procedural nuances that can lead to errors—and ultimately, the loss of rights.

Use declaration: 3 years after granting of the Mexican designation

For international registrations that designate Mexico, a declaration of actual and effective use must be submitted within three months after the third anniversary of the registration date granted by IMPI.

This date is not the same as the date on the Declaration of Granting Notification that IMPI sends to the International Bureau (WIPO). Many trademark holders mistakenly calculate the deadline from the wrong date, and as a result, miss the filing window.

If the use declaration is filed late, the Mexican designation will lapse automatically, and no extensions are allowed.

Use declaration at the time of renewal

When renewing an international trademark registration under Article 7 of the Madrid Protocol, holders must also submit a use declaration for each class before IMPI.

This must be done within three months following the renewal notification issued by WIPO.

However, the starting point of this three-month period is not clearly defined in WIPO’s informational notices (No. 13/2018 and No. 14/2018). It is unclear whether the deadline should be calculated from the notification date sent to the trademark owner, to the designated office (IMPI), or from the publication in the WIPO Gazette.

At Herrero & Asociados, our recommendation is to monitor the WIPO Gazette for the publication of the renewal, and also to track the Renewal Notice received by IMPI as the designated office via its public trademark database.

What happens if the use declaration is not filed after renewal?

Unlike the 3-year post-registration declaration (where missing the deadline leads to automatic cancellation), in this case IMPI issues an official action under Article 237 of the Federal Law on Protection of Industrial Property.

The holder is then granted a two-month period to respond and file the use declaration.

Article 237:

“If use is not declared, the Institute shall require the applicant to rectify the omission within two months. Failure to do so will result in automatic cancellation of the registration without further declaration by the Institute.”

However, this official action is only published in IMPI’s Gazette and is not sent to WIPO. Therefore, if the international registration does not have a local representative recorded before IMPI, the holder may never become aware of this action—and the trademark may expire due to inaction.

To maintain the validity of trademarks in Mexico designated through an international registration, the use declaration is a mandatory requirement. Failure to comply can result in the loss of trademark rights.

At Herrero & Asociados, we strongly recommend appointing a Mexican local representative for any designation of Mexico in international registrations. This ensures that the holder:

• Receives all relevant correspondence from IMPI.
• Has accurate control of deadlines for filing use declarations.
• Avoids procedural errors that could lead to cancellation.

Need help with your trademark in Mexico?

At Herrero & Asociados, we offer expert guidance on:

• Tracking use declaration deadlines in Mexico
• Managing international registrations designating Mexico
• Filing and responding to official actions before IMPI
• ️ Preventing the loss of rights due to procedural missteps

Contact us to ensure your trademark remains protected in Mexico—without unnecessary risks.