Registration and useOwnership of marks
Who may apply for registration?
According to the Mexican Law of Industrial Property, trademark registrations may be applied for by any individual and companies wanting to distinguish products or services.Scope of trademark
What may and may not be protected and registered as a trademark?
In Mexico, trademark protection is granted to any sign that is perceivable by the senses, represented in a clear and precise manner that is capable of distinguishing products and services from others in the market. Mexican law grants protection for non-traditional marks; specifically, for sounds, scents, motions, colours and product design or configurations. Likewise, protection for certification marks is available in Mexico.Unregistered trademarks
Can trademark rights be established without registration?
While use of a mark may grant the individual or company certain rights, such as grounds for a cancellation action upon prior use or the possibility of opposing use performed in Mexico as an exception against an infringement action, exclusive rights over a trademark are only obtained by means of registration.
Moreover, a mark may only be enforced against alleged infringers if it is already registered before the Mexican Institute of Industrial Property.
The only exception to this general rule corresponds to notorious and famous marks, which may be enforced without a registration, provided that suitable and sufficient evidence demonstrating such privileged status is exhibited.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Famous foreign marks may be protected provided that they demonstrate that they are known by Mexican consumers.The benefits of registration
What are the benefits of registration?
While there are some exceptions provided in Mexican law where unregistered marks may be enforced, in general terms, only registered marks may be opposed against third parties by means of cancellation, infringement or criminal actions. Also, only registered marks may be used as grounds of opposition.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
The only document that needs to be submitted is an application form. No power of attorney needs to be filed; however, a power of attorney needs to be granted by the filing date. Documents supporting claimed priority rights no longer need to be exhibited.
Electronic trademark filing is available with a 10 per cent discount granted by the government for online filing. To date, only an individual holding an electronic signature and bank account or credit card recorded before the Mexican tax authorities may sign an electronic application.
Trademark searches are available online, although caution is recommended, because the database may not be entirely up to date.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
According to the official document whereby the Mexican Institute of Industrial Property has established the terms in which a response in a trademark registration procedure should be issued, the examiner may issue his or her decisions in a file within a four- to six-month period from the date on which the last petition is filed.
Thus, an application that does not encounter any requirement or grounds for refusal may become registered within a four- to six-month period. Nowadays, electronic filing of trademark applications is available. This type of application may in some cases be assessed in a more expeditious manner.
Regarding designations deriving from an international registration, the Mexican Institute of Industrial Property has up to 18 months to issue its first decision or letter. Generally, the examiners are taking advantage of this extended deadline.
The official fee for the study, revision and issuance of a certificate of registration is 3,126.41 Mexican pesos. If the application is filed online, the government grants a 10 per cent discount.
If the application is objected to by the Mexican Institute of Industrial Property, then delays in obtaining the registration may be expected. Once a response to an official action is filed the examiner in charge will have another four to six months to issue a decision.
In the event that official actions are issued, additional official fees will have to be paid in the amount of between 377.89 Mexican pesos and 755.78 Mexican pesos per requirement or objection.
To file a trademark application, the following are required:
- the word or phrase to be registered and a black and white or colour specimen in the case of designed or combined marks; if dealing with applications for sounds, scents and product configurations, in light of the recent amendments, the applicant should provide a description of the mark to be protected;
- the law does not require the exhibition of the document upon which priority is claimed. Thus, to claim priority rights, it is only necessary to name the country of the base application with its filing date and the serial number, if possible;
- the products or services to be covered;
- the date of the first use of the trademark in Mexico, or confirmation that the mark has not been used;
- the domicile or registered business address of the applicant;
- the factory address or location of the main commercial establishment (street, number, city and country). This information is only required when an applicant claims a date of first use in Mexico; and
- a simplified power of attorney, which must be executed by an authorised officer of the applicant company and by two witnesses.
The accuracy of this information is very important since Mexican law provides that a trademark registration may be cancelled if it is granted upon false statements contained in the application form.
Moreover, the recently enacted Federal Law for the Protection of Industrial Property expressly provides that a registration shall be cancelled if the registrant in a cancellation proceeding does not demonstrate that the date stated as first use in the application form is accurate.
Registrations come into effect once the certificate is issued and published in the Official Gazette.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Mexico follows the International Classification of Goods and Services under the 11th edition of the Nice Agreement.
However, it is very important to verify the drafting of goods and services, because examiners tend to be strict concerning goods not expressly contained in the classification as described.
According to the Mexican Law of Industrial Property, multi-class filing is not available. The Federal Law for the Protection of Industrial Property is not clear on whether multi-class applications will be accepted, and we thus expect to have further clarification when the corresponding administrative regulation is issued.
Another issue to be taken into account is that, according to Mexican law, goods and services to be covered must be specified.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
Trademark applications are subject to two different types of examination. Initially, a formal examination is performed to make sure that all the required information has been provided and that the goods or services to be covered are property drafted and classified.
In a second examination, the officer determines whether the proposed mark is subject to being registered, either owing to its nature (absolute grounds) or in light of pre-existing registered marks or pending applications (relative grounds).
Applicants have a two-month term, counted from the date in which they are served with the official action, to respond to any objection with the possibility of obtaining two extensions of one month each time.
The extensions do not need to be applied for because they operate automatically provided that the corresponding fees of approximately 377 Mexican pesos per month are paid in a timely fashion.
However, according to the new Federal Law for the Protection of Industrial Property, examiners will now issue a single official letter containing the formal requirements and objections upon relative and absolute grounds. Likewise, if any oppositions are filed, the corresponding notification will be made in the same official letter. The applicant will still have a two-month term, subject to a two-month extension, to address all the requirements and objections made by the examiner and to respond to any opposition, if filed.
Traditionally, the Mexican Institute of Industrial Property disregarded documents of consent and coexistence agreements, arguing that besides having the obligation to protect the rights of brand owners, they had to protect consumers from being led into confusion or error when finding to identical or confusingly similar marks for identical or similar goods and services. However, owing to an amendment of the law, the Mexican Institute of Industrial Property must accept documents of consent when dealing with confusingly similar marks.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
When filing the application, the applicant must state whether the mark has been used. Mexican law expressly states that the date of first use should refer to Mexican territory. If no date of first use is claimed, then it will be understood that the mark has not been used.
In Mexico, trademarks may be registered even if their use has not commenced.
The ownership of a foreign registration does not grant any right of priority on behalf of the applicant except that provided by the Paris Convention.
Mexican law does not expressly provide the time in which use of a mark must begin. However, registrants will have to file a declaration of use within the three-month period following the third anniversary of the corresponding registration. If said declaration is not filed, the registration will automatically lapse.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Marking is mandatory to be able to enforce infringement actions or to claim damages. The symbol ®, the letters MR or the term Marca Registrada (registered trademark) are allowed. The use of the term ™ is not recognised as the adoption of a mark. If marking has not been made, Mexican law allows for the amendment of such circumstance by demonstrating that the brand owner has publicly announced that the mark is registered by, for example, placing an advertisement in a newspaper.Appealing a denied application
Is there an appeal process if the application is denied?
The decision to deny an application may be challenged either by means of administrative recourse before the Mexican Institute of Industrial Property or through a nullity action that must be filed before the Federal Court of Fiscal and Administrative Justice, which has a specialised chamber for intellectual property matters.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
According to Mexican law, applications should be published for opposition purposes within a 10-working-day period, counted from the date of filing. The deadline to file an opposition is one month following the date of publication. This deadline is non-extendable. The Mexican Institute of Industrial Property publishes listings detailing the trademark applications that have been opposed. Upon the corresponding publication, an applicant has a one-month term in order to file its response to set out the grounds of opposition.
Once the term granted to the applicant to respond to the opposition expires, the authority will grant two days for both parties to submit their final allegations. This term has been extended to five days according to the recently enacted Federal Law for the Protection of Industrial Property.
Oppositions may be filed on the grounds of bad faith; namely, in those cases where the marks are applied for against good practice or when the applicant intends to obtain a benefit against the interests of the rightful owner of the corresponding mark.
The grounds for opposition are not limited to pre-existing rights, but include other absolute grounds, such as the descriptiveness of a proposed mark.
The opposition process as outlined in law does not suspend or interrupt the registration process and thus should not delay the study and ruling of trademark applications.
The examiners still carry out the formal and novelty exams and thus are able to object to applications on both relative and absolute grounds.
Once the registration process is concluded, the examiner will determine whether the application should be granted into registration, in which case the certificate of registration will be issued.
Aside from the opposition system, it is still possible to expunge a trademark registration by lodging a cancellation action, which may be grounded upon the following causes of action:
- the registration was granted against the applicable provisions;
- a third-party claim to have rights over the mark derived from prior use in connection with the same or similar goods;
- the registration was granted upon false statements contained in the application form (the recently enacted Federal Law for the Protection of Industrial Property expressly provides that a registration shall be cancelled if the registrant in a cancellation proceeding does not demonstrate that the date stated as first use in the application form is accurate);
- the registration should not have been granted in light of a pre-existing mark covering the same or similar goods or services; or
- the registration was obtained in bad faith, namely by a distributor, licensee or agent of a foreign registered mark.
Costs related to oppositions and cancellation actions depend on many factors, such as the type of evidence to be rendered and whether certification, legalisation and translation of documents will be required. On the other hand, in Mexico, there are no standardised tariffs or guidelines regarding professional fees, which may vary depending on the engaged firm.
Thus, it is of the utmost importance to work closely with counsel to come up with a time and cost-effective strategy.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
In Mexico, a trademark registration is in full force and effect for a 10-year period, with the possibility of filing subsequent renewals for 10 years. Under the current regime, the 10 years are counted from the filing date of the corresponding application. However, for registrations granted under the recently enacted Federal Law for the Protection of Industrial Property, the 10-year period will be counted from the granting date of the registration.
An important issue to take into account is that, at present, declarations are compulsory, whereby they have to be filed over two different moments:
- within the three-month window following the third anniversary of a registration; and
- together with renewal petitions.
If the third anniversary declaration of use is not filed, the corresponding registration will automatically lapse. The official fee regarding the commented declaration of use is 1,143.38 Mexican pesos.
While Mexican legislation does not provide a guideline on the use that suffices to defend a registration (eg, if token use is enough), the law’s administrative regulation states that the use of a mark should be performed in accordance with the practices of the relevant market.
Under the provisions of the new Federal Law for the Protection of Industrial Property, the protection of a registration will be limited to those goods and services in connection with which the declaration of effective use is submitted.Surrender
What is the procedure for surrendering a trademark registration?
To surrender a trademark registration, the owner must file a voluntary cancelation petition. While not provided in the Industrial Property Law, if the petition is filed on behalf of registrant, it is advisable to exhibit a suitable power of attorney where it is clearly stated that the proxy is appointed to cancel registrations, otherwise the examiner may issue a requirement to that effect.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright or designs)?
Designs and sound marks may be protected through copyright. Sometimes, trade dress may also be protected as copyrighted work. Nevertheless, copyright protection has a certain duration and, in any event, requires the existence of an individual to be recognised as the author.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Online trademark and domain name protection may be sought through the Industrial Property Law since there is no specific legislation. However, to cancel domain names, it is necessary to file a domain name dispute, either before the local register (.mx) or before ICANN (.com). Other useful tools brand owners should consider are the takedown processes provided by social media administrators.
Law stated dateCorrect on
Give the date on which the information above is accurate.
7 August 2020.