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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
In Mexico, trademark use is not required to secure a mark’s registration. However, the right of exclusivity can be obtained only through the grant of a trademark registration.
The first party to file an application may acquire ownership of a trademark and the right to exclusivity, even if it is not using the mark. However, any party that can show prior uninterrupted use may challenge the registration within the three-year statute of limitations prescribed by law.
What legal protections are available to unregistered trademarks?
Mexican law provides no express protection for unregistered trademarks. However, prior uninterrupted use of a trademark, undertaken in good faith, is grounds to oppose a trademark registration and can give rise to an invalidity action against the registration of a confusingly similar trademark granted after the owner of the unregistered trademark started using the unregistered mark.
How are rights in unregistered marks established?
As an exception, rights in unregistered trademarks can be established only against an action of a third party whose trademark was registered after the owner of the unregistered trademark started using the unregistered mark. This prior use can give rise to an invalidity action, which must be brought within three years from the grant of the registration being challenged.
No other legal action can be taken based on unregistered trademarks.
Are any special rights and protections afforded to owners of well-known and famous marks?
The Industrial Property Law recognises two types of well-known trademark: notorious trademarks and famous trademarks. Trademarks which are well known among the general public are ‘famous trademarks’, while those of which knowledge in Mexico is limited are ‘notorious trademarks’.
A trademark will be deemed ‘notorious’ when a particular Mexican public sector or trade circle knows of the mark as a result of:
- the commercial activities in Mexico or abroad of a party that uses the mark in connection with its products or services; or
- the promotion or advertising thereof.
A trademark will be deemed ‘famous’ when the majority of the public know of it.
This distinction is relevant, as the grounds on which an application can be refused are different for notorious and famous trademarks, as provided in the new Sections XV and XVbis of Article 90 of the Industrial Property Law, respectively.
Article 90(XV) of the Industrial Property Law provides that an application will be refused when the trademark is identical or similar to a trademark that the Mexican Institute of Industrial Property (IMPI) deems or has declared to be notorious in Mexico independent of the goods or services covered by the application. However, this ground of refusal should proceed only if the IMPI estimates that use of the applied-for trademark may:
- lead to confusion or inappropriate association between the applicant and the notorious trademark’s owner;
- constitute a benefit to the applicant without the notorious trademark owner’s authorisation;
- damage the notorious trademark’s reputation; or
- dilute the notorious trademark’s distinctive character.
Article 90(XV)bis of the law provides that an application will be refused when the trademark is identical or confusingly similar to a trademark that the IMPI deems or has declared famous in Mexico independent of the goods or services covered by the application.
The IMPI has the authority to issue a declaration certifying that a trademark is notorious or famous in Mexico. This declaration will be issued after the petitioner has met certain requirements and must be understood as a juridical act whereby a question of fact – namely, that a trademark is notorious or famous in Mexico – is recognised for all legal purposes.
Further, the declaration will be issued independently of the IMPI’s authority to evaluate whether a trademark is notorious or famous within the context of trademark litigation proceedings (ie, infringement or cancellation proceedings) or as a result of the examination of a trademark application.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are invalid and unenforceable in Mexico. Their existence is relevant only when the IMPI is analysing the registrability of a trademark in Mexico, but it is not mandatory for the IMPI to consider them.
What legal rights and protections are accorded to registered trademarks?
A trademark registrant has a right of exclusivity to use the mark. Therefore, trademark registrants have grounds to bring an infringement action against any party using the registered trademark or a confusingly similar one in connection with the same or similar products or services covered by the registered trademark.
Infringement actions can also be filed against third parties that undertake unfair competition activities that may in any way affect a trademark’s goodwill.
Further, exclusivity can also serve as the basis for bringing a criminal action in the event of the falsification of products. It is also useful for requesting customs authorities’ cooperation to suspend the transit of containers with commodities that bear the registered trademark or a confusingly similar one in an unauthorised manner.
A registered trademark can also serve as the basis for filing an opposition against any application for a confusingly similar trademark covering similar products or services.
In addition, a registered trademark can serve as a basis for bringing invalidity actions against other registrations covering confusingly similar trademarks applied to the same or similar products.
Who may register trademarks?
Any natural person or company, either Mexican or foreign, may register a trademark.
What marks are registrable (including any non-traditional marks)?
Under the Industrial Property Law, a ‘trademark’ is a visible sign used in the market to distinguish products or services from others of the same sort. As such, the following are registrable under Mexican law:
- three-dimensional (3D) trademarks; and
- a combination of any of the above.
Although Mexico has joined the Madrid Protocol, non-traditional trademarks are not yet recognised under the Industrial Property Law.
Can a mark acquire distinctiveness through use?
Acquired distinctiveness is not recognised under Mexican law.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Registration may be refused for:
- animated or changing denominations, figures or 3D forms expressed dynamically, even if they are visible;
- technical or commonly used product names and services, as well as such words which, in everyday language or commercial practice, have become the normal or generic designation thereof;
- 3D forms which are part of the public domain or are in common use and which lack sufficient originality to be easily distinguishable, as well as the normal and ordinary form of products or that imposed by their nature or industrial function;
- descriptive trademarks (ie, descriptive or indicative words which are used in trade to designate a product’s type, quality, quantity, composition, end use, value, place of origin or production era);
- letters, digits or isolated colours, unless they are combined or accompanied by elements that give them a distinctive character, such as symbols, designs or denominations;
- translations into other languages, capricious spelling variants or the artificial construction of unregistrable words;
- marks that reproduce or imitate official control or guarantee signs or seals adopted by a state without the competent authorities’ authorisation or currencies, bank notes, commemorative coins or any official national or foreign payment medium;
- marks that reproduce or imitate names or the graphic representation of decorations, medals or other awards obtained in officially recognised exhibitions, fairs, conventions or cultural or sports events;
- geographic denominations (proper or common) and maps, as well as gentile nouns and adjectives which indicate the origin of products or services and can cause confusion or error as to their origin;
- denominations, figures or 3D forms that could deceive the public or lead to error. This is understood to mean marks that constitute false indications of the nature, components or qualities of the products or services that they purport to protect; and
- trademarks reproducing or imitating, without authorisation coats of arms, flags or emblems of any country, state, municipality or equivalent political division, as well as names, initials, symbols or emblems of international, government or non-governmental organisations or any other officially recognised organisation, as well as the verbal designation thereof.
Relative grounds Registrations may be refused for:
- names of population centres or places known for the manufacture of certain products (in order to protect such products), except the names of privately owned places that leave no room for confusion where the owner has consented to the name’s use;
- names, pseudonyms, signatures and portraits of persons without the interested party’s consent or, if they are deceased, that of his or her spouse, blood relative, adopted relative or collateral relative (in that order) up to the fourth degree;
- titles of intellectual or artistic works, periodical publications and broadcasts, unless the holder of the respective right has expressly authorised it;
- names of fictitious or symbolic characters, characterised human characters, artists and artist groups, unless the holder of the respective right has expressly authorised it;
- names, figures or 3D forms applied to any product or service that are equal or similar to a trademark which the IMPI considers to be notorious or famous in Mexico. This applies to well-known trademarks when the use of the trademark by the party that requests its registration:
- may create confusion or a risk of association with the holder of the notorious trademark; or
- constitutes use that will damage the trademark’s prestige. In the case of famous trademarks, this ground will apply regardless of the type of product or service;
- trademarks that are identical or confusingly similar to another pending registration filed earlier or to a registered and effective trademark applied to the same or similar products or services; and
- trademarks that are identical or confusingly similar to the trade name of a company or an industrial, commercial or service establishment, the primary activity of which is the production or sale of the products or the rendering of the services purported to be protected by the trademark, provided that the trade name was used before the registration application was filed or the trademark’s use was declared.
Are collective and certification marks registrable? If so, under what conditions?
Certification marks are not recognised under Mexican Law.
Collective marks can be registered in favour of legally constituted associations or groups of producers, manufacturers, merchants or service providers, with the aim of distinguishing their members’ products or services in the market from third-party products or services. Collective trademarks cannot be transferred to third parties and their use is reserved for the applicable association or its members.
Along with the application for a collective trademark, interested parties must present the rules for its use.
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