Mexico: Q&A Handbook on Trademark Registrations in Mexico

Q&A Handbook on Trademark Registrations in Mexico

The pandemic has accelerated the offering of products and services online, increasing the need to protect company’s intellectual property. Furthermore, the wide range of possibilities offered by the Metaverse is triggering the need to rethink the scope of traditional intellectual property protection, including trademark registrations.

Considering the environment described above and the growing interest of companies in the protection of their trademarks, ECIJA Mexico offers answers to some of the most frequent questions on the subject, such as why it is important to acquire a trademark registration and the expected process and timelines, among other issues

1. What is a trademark in Mexico?

 

Derived from the constant need to update the legislation on the matter, in 2018 the traditional concept of “trademark” was modified to the following:

“Any sign perceptible by the senses and capable of being represented in such a way as to make it possible to determine the clear and precise object of protection, which distinguishes goods or services from others of the same kind or class in the market.”

By virtue of this amendment, it will not only be possible to obtain protection over traditional trademarks (such as names, designs, etc.), but also protection over smells, sounds, holograms, trade dress. Their registration shall be granted provided they meet the requirements established in the law, among which distinctiveness stands out.

 

2. What rights are acquired by registering a trademark in Mexico?

Obtaining the registration of a trademark in Mexico confers on its owner the exclusive right to use it, either directly or through an authorized third party, by means of a license.

It also gives the holder the right to exercise various legal procedures if its rights are affected, such as those related to the declaration of infringement or nullity; as well as the possibility of using the symbol “Ⓡ” or the initials “M.R.” (registered trademark in Spanish).

To obtain a trademark registration in Mexico, it is necessary to file an application for registration with the Mexican Institute of Industrial Property (IMPI) or through an international registration procedure filed with the World Intellectual Property Organization (WIPO), requesting protection in Mexico.

In addition to the foregoing, Mexican law contains means of defense such as opposition or nullity for prior use in Mexican territory or abroad, which allow individuals who do not yet have trademark registrations in Mexico to exercise defense actions if they have a better right over a distinctive sign.

 

3. Why is it important to obtain a trademark registration in Mexico?

Because by means of the registration before the Mexican Institute of Industrial Property (“IMPI“) the titleholder will obtain the right to the exclusive use of the distinctive sign in Mexico as well as evidence to demonstrate ownership of such sign. It is worth highlighting that obtaining the exclusive use of a distinctive sign prevents it from losing distinctiveness, which can mean a great economic advantage for the owners.

 

4. How much does it cost to apply for a trademark registration in Mexico?

According to the official fees established by IMPI, which are updated periodically, the cost for the study of a trademark application in Mexico is $3,126.41 Mexican pesos (∼USD 150). Other fees corresponding to the procedure may be added to this fee, e.g., for replying to an official communication concerning a prior registered trademark, for submitting a non-requested clarification, etc.

It is worth mentioning that the payment of the application fee does not guarantee the registration of the trademark applied for, since the Institute must carry out the corresponding formal and substantive studies before being able to grant protection.

 

5. How long does it take to obtain a trademark registration in Mexico?

The examination of a trademark application takes approximately four to six months, counted from the date of filing with the IMPI. However, it could be extended if there are requests related to the form of the application (such as needed clarifications to the description of products or services) and/or requests related to the substance (such as previous applications or registrations which are similar to a confusing degree with the sign aimed to be registered).

 

6. How is the trademark registration process in Mexico?

A trademark registration application may be filed at the IMPI’s offices, or online, through the Institute’s electronic portal.

Once the application has been filed, it will be published in the Official Gazette of the Institute, so that any interested third party may oppose to its registration, for which they will have a period of one month from the date of such publication.

At the end of this period, the formal and substantive examination will be carried out (in which any opposition will also be considered).

Subsequently, the Institute shall issue:

 

1. The title of registration of the trademark, if it complies with the requirements of form, among others and there are no rights previously acquired by third parties, which constitute an impediment; or,
2. An official communication informing whether there is any formal or substantive impediment to obtaining the registration, for which the applicant will have a period of two months to respond to the Institute.

It is important to mention that such term may be extended up to two months, as long as the official fees established by the Institute are paid. If no response is received, the application process will be abandoned, without the possibility of resuming it.

Once the formal and/or substantive requirements have been met, the Institute will proceed to issue a final resolution, i.e., granting of protection or a resolution informing the refusal of registration.

 

7. What happens if I am not satisfied with the Institute’s resolution?

If the Institute denies the registration of the proposed trademark, the Mexican legislation contemplates an appeal for review, which is filed with the Institute, or a nullity proceeding, which is filed with a specialized Court.

 

8. How does the opposition system work in Mexico?

According to our legislation, after the trademark application is published in the Official Gazette, any interested third party has one month to oppose the registration of the trademark.

Once the opposition has been filed, the Institute will analyze it, and the result will be informed to the applicant, after the formal and substantive examination.

The applicant is entitled to assert his/her rights in view of the opposition and the prior registrations or applications cited (as applicable) within a period of two months, counted from the notification of the corresponding official notice.

It is important to mention that it is not necessary to prove ownership of a trademark registration or application in Mexico in order to file an opposition. If the opponent has an interest, it is capable of initiating such procedure, which will be subject to the considerations and analysis of the corresponding examiner.

 

9. How long does a trademark registration remain valid?

 

The term of a trademark registration is of ten years, renewable for periods of the same duration.

However, it is important to mention that, as of November 5, 2020, the validity of trademark registrations will be counted taking into consideration the date on which protection was granted, contrary to registrations prior to that date, whose validity will be counted as of the filing date of the trademark application.

 

Likewise, the real and effective use of the trademark must be declared at the time of filing the renewal.

10. What is the declaration of use and when should I file it with the Institute?

As of 2018, declarations of use in Mexico became mandatory and the same must be filed 1) within three months after the third anniversary of the granting of the registration of the distinctive sign and 2) at the time of renewing the registration.

The declaration of use in Mexico consists of informing the Institute whether the trademark is being used in Mexico and for which of the products or services it protects. The purpose is to avoid the existence of distinctive signs that are not being used (i.e., idle) and that hinder the granting of new registrations, thus promoting good commercial practices.

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Intellectual Property Area of ECIJA Mexico

socios.mexico@ecija.com