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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
While it is no longer compulsory to submit a power of attorney document alongside a trademark application – provided that the Mexican Industrial Property Office (IMPI) can recognise the authority of the representative signing it through a declaration made under the oath contained in the application form – it is essential for an applicant to grant a power of attorney document in the agent’s favour when filing an application, in case the agent’s authority to act on the applicant’s behalf is questioned.
A power of attorney form does not need to be notarised or legalised.
What information and documentation must be submitted in a trademark registration application?
The following information must be submitted in a trademark registration application:
- a representation of the trademark. Where the trademark includes a design, the applicant must supply a digital file of the design to be registered with the application;
- the applicant’s complete name, nationality and address;
- the full date (day, month and year) of first use of the mark in Mexico. This date of first use must be accurate and will need to be supported with documentary evidence if it is contested by a third party;
- the products or services sought to be covered; and
- the full address of where the goods are commercialised or manufactured or where the services to be protected are rendered. This information must be furnished only if the trademark has already been used in Mexico.
Further, if the applicant wants to claim a priority right, it must specify in its application the prior mark’s serial number, filing or registration date and country of origin.
What rules govern the representation of the mark in the application?
The IMPI has previously imposed the criterion that if a trademark is represented in black and white, it can be used in any colour, whereas if it is represented in specific colours, the mark must be used only in accordance with the specified palette. However, this criterion does not derive from any law or judicial precedent and its validity may therefore be subject to a case-by-case analysis.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The official government fee to be paid to the IMPI for one trademark application in one international class is Ps2,458.
How are priority rights claimed?
If an applicant wants to claim a priority right, it must specify in its application the prior mark’s serial number, filing or registration date and country of origin. The Mexican application must be filed within six months from filing the application in the country of origin.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches can be conducted via the IMPI’s online database. They are not required before filing, but it is convenient to conduct them before doing so. No official fees are charged for conducting online searches.
What factors does the authority consider in its examination of the application?
An initial examination deals with the formalities (ie, the information contained in the application itself and any attached documentation) and classification issues. A second examination deals with the inherent registrability of the trademark and any existing registered trademarks or applications under consideration that may constitute an obstacle.
Does the authority check for relative grounds for refusal (eg, through searches)?
The IMPI checks for relative grounds for refusal through searches.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Any objections raised by the IMPI will be communicated to the applicant through an office action, to which the applicant will have two months to reply. An automatic extension of another two months is automatically granted by law (there is no need to request it).
If the applicant fails to produce a reply within the abovementioned four months, the application will be formally denied.
If the applicant produces a reply on time, the IMPI will analyse it and, based on the arguments produced by the applicant, either:
- grant the corresponding registration;
- issue a second office action;
- declare the abeyance of the application (when the applicant announces that it will be initiating legal action against the registration or registrations cited as anticipations); or
- formally deny the application.
Can rejected applications be appealed? If so, what procedures apply?
IMPI rulings denying the registration of a trademark can be appealed before the Federal Court for Administrative Affairs, which is an administrative court. Federal Court for Administrative Affairs decisions can be appealed through an ‘amparo’ law suit, which is a type of constitutional rights action prosecuted before the federal circuit courts. The federal circuit court’s decision is final.
When does a trademark registration formally come into effect?
Trademark registrations come into effect as soon as they are issued by the IMPI.
What is the term of protection and how can a registration be renewed?
A Mexican trademark registration has a 10-year term of protection which starts on the application’s filing date. This can be renewed for successive 10-year periods, provided that the registered trademark has been used in Mexico and the corresponding official government fee of Ps2,629 is paid.
A renewal petition must be filed within the six months preceding the registration’s expiration or within the six-month grace period which starts on the registration’s expiration date.
What registration fees apply?
No official fees must be paid for the issuance of a trademark registration.
What is the usual timeframe from filing to registration?
Straightforward cases usually take between six and eight months if no eventualities arise during the application’s prosecution.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
The opposition system recently took effect in Mexico.
In accordance with Article 120 of the Industrial Property Law, any individual or company that considers that a trademark should not be registered (because of absolute or relative grounds) may file an opposition against said mark.
In its effects, the system is similar to the letters of protest aspect of the US trademark system, as the IMPI is not legally bound to consider an opposition filed by the registrant of a trademark that is allegedly affected by the opposed application.
What is the usual timeframe for opposition proceedings?
The IMPI’s first rulings concerning formally filed oppositions were issued in April 2017, which means that the timeframe expected for opposition proceedings is between six and seven months.
Are opposition decisions subject to appeal? If so, what procedures apply?
The IMPI’s first ruling addressing oppositions is controversial, because its rulings denying the validity of the opposition state that this ruling can be appealed through a nullity trial before the Federal Court for Administrative Affairs.
However, the law does not clearly state what the consequences of appealing the resolution during the opposition proceeding would be. Further, since the opposition system was recently implemented in Mexico, no precedents in which such effects have been determined exist.
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