How to file a trademark in Mexico?

To file a trademark in Mexico, you must register it with the Mexican Intellectual Property Office (IMPI). Before submitting your application, you must ensure that you meet all the requirements established by IMPI.

What is a trademark in Mexico?

Article 88 of the Industrial Property Law defines a trademark as any visible sign that distinguishes products or services of the same type from others in the same category on the market.

How to file a trademark in Mexico?

In Mexico, trademark applicants must file in Spanish. To obtain a filing date, they must include the applicant’s name, address, and nationality; a description of the products or services; a sample of the trademark (if applicable); the first use date in Mexico (if any); and a co-ownership agreement if more than one applicant is involved.

Applicants usually don’t need to submit a Power of Attorney. If the filing agent declares under oath that they have authority to act on behalf of the applicant, the Mexican Institute of Industrial Property (IMPI) accepts the application.

To claim priority rights, applicants only need to provide the Priority Document number, country of filing, and filing date.

To register a trademark in Mexico, applicants must ensure that the mark meets the following requirements:

It must be graphically representable.
It must be available and not previously registered.
It must be distinctive and not likely to confuse the public.
It must consist of words, letters, numbers, drawings, shapes, or a combination of these elements.

Check out how to file a patent in Mexico.

How is the process of a Trademark in Mexico?

Previous Searches
First, we highly recommend conducting an availability search before filing any trademark application. These searches are performed for each trademark and each class.

Examination
Once you file your trademark application form, IMPI begins the examination process. Initially, IMPI assigns an application number and filing date, then proceeds with a three-phase examination:

Review and publication for opposition in the Official Gazette;
Formal examination, during which the examiner checks whether the application meets formal requirements such as the applicant’s name, nationality, address, and correct classification of goods or services. Notably, most official actions during this phase relate to the classification of goods or services;
Substantive examination, where the examiner determines if the mark is already registered by another party and whether it complies with absolute and relative grounds for refusal.

Typically, the formal and substantive examinations take four to six months. If IMPI raises objections during either phase, it notifies the applicant through an office action, allowing two months to respond with legal arguments. Furthermore, this response period can automatically extend by another two months.

Registration
Finally, IMPI grants the registration certificate, which gives the owner exclusive rights to use the mark for 10 years from the filing date. You can renew the registration every 10 years indefinitely. However, to maintain your rights, you must use the mark in Mexico within three years after the grant and continue using it for another three years; otherwise, the registration may face cancellation due to non-use. Although IMPI does not require proof of use, the renewal application does require a sworn declaration confirming that the mark has been used in accordance with the Industrial Property Law.

Duration of the procedure:

If you file a complete application and no oppositions arise, and if the examiner does not raise any objections regarding registrability or cite prior references, then the registration may be granted within five to seven months from the filing date. However, if oppositions are filed or the examiner points out formalities or reference objections, the application process may extend significantly. Typically, this extension lasts between 12 and 18 months and may ultimately conclude either with the registration being granted or refused.

Grant, validity term and maintenance fees

A registered trademark in Mexico lasts ten years from the filing date, and you can renew it unlimited times for additional ten-year periods. Although IMPI does not require a grant fee, you must file your renewal application within six months before the expiration date or during the six-month grace period after expiration.

You do not need to submit a Power of Attorney (POA) to renew a trademark registration, but attorneys must keep one on file. If you submit a POA, you must sign it along with two witnesses, and it does not require certification or legalization.

International treaties

Mexico has signed and joined several important international treaties and conventions, including:

the Paris Convention for the Protection of Industrial Property;
the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks; and
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

Mexico uses a single class system and does not accept multiple-class applications. When Mexico is designated in Multiple Class International Registrations (Madrid Protocol trademarks), it divides them into separate national applications for each class.

Representation by a trademark attorney

For foreign applicants, it is necessary to perform trademark prosecution in Mexico through a practicing trademark attorney of Mexico.

Goytia & Associates has local offices in Mexico and in key cities of the world to ensure the best quality of IP service. Our extensive coverage of +120 countries enables our clients to effectively manage multiple filings and cases through one centralized agent.