A Trademark in Mexico is registered before the Mexican Intellectual Property Office (IMPI) provided the owner of the mark ensures all necessary requirements as stipulated by the IMPI are met prior to submitting the official application of registration.
What is a trademark in Mexico?
According to article 88 of the Industrial Property Law, “a trademark is understood as being any visible sign that distinguishes products or services of the same type from others of the same type or category on the market”.
How to file a trademark in Mexico?
The official language of the trademark application in Mexico is Spanish. To obtain a filing date, the trademark application must contain:
- the applicant’s name, address, nationality;
- description of the product(s) or service(s);
- a sample of the trademark (if any);
- first, use date of the trademark in Mexico (if any);
- co-ownership agreement in the case of several applicants.
- A Power of Attorney is not required in most cases. The Mexican Institute of Industrial Property will consider that the agent is authorized to file the trademark application on behalf of the applicant if the agent states under oath that it has such authority.
- In Mexico, Priority Document number, country of filing and date is enough to claim priority rights.
The main requirements to satisfy for trademark registration include:
- The mark must be capable of graphical representation
- It must be available to use and not previously registered
- The mark must be distinguishable and not confusing to the public
- It must be one or a combination of; words, letters, numbers, drawings, and shapes.
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How is the process of a Trademark in Mexico?
Previous searches
Before filing any trademark application, an availability search is highly recommended. Searches are carried out per trademark and per class.
Examination
The examination procedure begins with the filing of a trademark application form with IMPI.
Once the application has been filed, IMPI allocates an application number along with the corresponding filing date and the examination process begins. The process comprises three phases:
- Review of the application and publication for opposition purposes in the Official Gazette;
- Formal examination, during which the examiner determines whether the application fulfills formal requirements, such as the name of the applicant, nationality, address, and correct goods or services classification. Most official actions issued during the formal examination relate to the classification of goods or services; and substantive examination, during which the examiner determines whether the mark applied for has already been registered by another party and whether the mark complies with absolute and relative grounds.
- The formal and substantive examinations together take four to six months. Any objection raised during formal or substantive examination will be notified to the applicant through an office action, granting a two-month term to provide legal arguments against the objections. This term can be automatically extended by a further two months.
Registration
The registration certificate grants the owner the exclusive right to use such mark for a 10-year period, beginning from the filing date; registration can be renewed for subsequent 10-year periods. To maintain its rights, the registrant must use the mark in Mexico within three years of the date of grant and for a further three years; otherwise, the registration will become vulnerable to cancellation based on non-use. Although no proof of use is required, the renewal application includes a declaration under oath that the mark has been used according to the Industrial Property Law.
Duration of the procedure:
If an application is filed complete and no oppositions are filed, no objections as to inherent registrability are issued and no prior references are cited by the examiner, registration may be granted within five to seven months as of the filing date. Otherwise, if oppositions are filed, or if formality requirements or references objections are cited by the examiner, the processing of the application may take quite a long time (between 12 and 18 months) and may conclude either in the granting of registration, or the refusal thereof.
Grant, validity term and maintenance fees
The term of a registered trademark in Mexico is ten years from the date of filing, renewable an unlimited number of times for 10-year periods. No grant fee is stipulated. An application for renewal must be filed within six months prior to the expiration date or in the grace period of six months succeeding the expiration date.
Though the Power of Attorney is not required for renewal of trademark registration, attorneys must have one in their files. If the POA is filed, it must be signed by the registrant and two witnesses. The document does not need certification or legalization.
International treaties
Mexico is a party or signatory to the following relevant international treaties and conventions, among others:
- 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 has a single class system. Multiple-class applications are unacceptable. Multiple Class International Registrations (Madrid Protocol trademarks) in which Mexico is designated will be divided into National applications, per 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.
Do you need to file a trademark from another country in Mexico?
This content may suffer modifications due to updates in the official regulations of Mexico.
