POR MAURICIO NARVÁEZ
MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, MARCH 2009
The Mexican IP authorities have implemented new procedures for renewing trade mark applications that have been pending for ten years.
Mexican law states that a registered trade mark is valid for ten years from its filing date and that it may be renewed for an additional term of ten years. However, if the trade mark registration has not yet been granted after ten years, it is not possible to request a renewal.
When the registration procedure is delayed for more than ten years, the authorities will now grant a Certificate of Registration. At the same time, an official action will be filed requesting that the renewal petition be filed within a period of six months.
Since the six month term is not supported by the Mexican Law of Industrial Property (LIP), IP practitioners must rely on a supplementary law, titled the Federal Law of Administrative Procedures (FLAP). This law governs terms for administrative acts not provided in the LIP. Article 32 of the FLAP establishes that if the LIP does not regulate terms for notifications, they must not exceed ten days as of their issue date.
In some cases, the term of ten days is not sufficient to obtain the renewal instructions. However, it must be relied upon to ensure that the renewal petition has the necessary legal support.
Thus, trade mark owners must be careful when receiving Certificates of Registration in Mexico together with official actions requesting to file a renewal, since the six month term is not supported by law and could be easily refuted in a litigation procedure.