(From Ministry of Foreign Affairs website – Regional index)
Useful information when protecting trademark rights in the United Mexican States (hereinafter “Mexico”) is presented below.
It is our hope that our clients will find this page helpful in protecting their intellectual property overseas.
< Average examination time > (As of March 2018) >
Currently, examination takes approximately 6 months to 1 year from filing to registration of a trademark in no Office Action is issued.
■ Trademark rights in Mexico
1. Marks eligible for registration
(1) About marks
In Mexico all visible marks have sufficient distinctiveness. Such marks can be protected as trademarks as long as the goods/services of a specific businessman can be distinguished from the marks/services of another businessman. Marks for sounds and smells cannot be perceived visually and are therefore not eligible for protection.
(2) Types of marks that can be protected
- – visual names and designs (with sufficient distinctiveness and distinguishable from other visual names and designs)
- – three-dimensional shapes
- – brands, company names, names of enterprises
- – names of individual persons
In addition the following are also eligible for registration:
- A: Advertisement slogans
- B: Collective trademarks
- C: Associated trademarks
- D: Well-known trademarks
(3) Marks not eligible for registration
Marks cannot be registered (1) if they are similar prior trademarks or (2) due to a lack of distinctiveness.
2.From application until registration
– The trademark term is 10 years from the trademark application date. The right is valid from the application date.
– Renewals every 10 years are possible.
→ Renewal procedure are possible from 6 months before the end of the trademark term until 6 months after the end of the trademark term. Different from the Japanese trademark system no additional official fees are incurred if a renewal procedure is carried out after the end of term has already passed.
→ In order to carry out a renewal, the trademark has to be in use in Mexico.
(2) Classifications (goods or services)
– A system of ” one class in one application” is adopted.
(3) Application to examination
a) Trademark application
(i) Information required in the application form
● Name, nationality, and address of the applicant(s)
● Trademark sample of the trademark name and color, or in case of a three-dimensional trademark its content
● Indication of goods/service (pursuant to Nice classifications))
● Date of first use in Mexico (can be corrected afterwards) or indication of non-use
● Power of Attorney
● Information of basic application (if a priority right is claimed)
(ii) Accelerated examination
There is not system of accelerated in formation as in Japan.
(iii) Offer of information
There is no system for the offer of information regarding applications through third parties.
Examination is carried out in the order of receipt in which applications are received.
– First, a formality examination is carried out.
– After the formality examination the substantive examination is carried out (absolute and relative reasons for refusal).
– Office Action
⇒Response term:2 months
⇒Notification not through a online system or via telephone but by means of written documents.
⇒Rebuttals, amendments, etc. by submission of written arguments, amendment, evidences, letters of consent, etc. as required.
(4) Publication of application
Mexico was one of the few countries worldwide in which there was no opposition system until an opposition system was newly introduced through a law revision on August 30, 2018,
The term for oppositions is 1 month from the day after the publication of the application during which anyone can file an opposition.
(6) Trademark registration
When an application is approved in the substantive examination after the opposition terms has passed without opposition, or when an application is approved after an opposition was received, the IMPI registers the trademark and send the applicant(s) a Certificate of Registration.
In case of a straightforward registration without any Office Action, etc. against the trademark application, a Certificate of Registration is issued after approx. 6 months to 1 year after the application date.
(7) Appeal against Decision of Refusal
In case of dissatisfaction with a Decision of Refusal, the applicant(s) can demand a trial against the Decision of Refusal either at the IMPI or at a court.
(8) Cancellation appeal based on non-use
If a trademark has not been used for 3 or more years in relation to its designated goods/services, third parties can request a cancellation appeal of the trademark based on non-use.
3 years means mean 3 years back from the day the third party requested the cancellation appeal and the demandee needs to make a sworn statement with regard to use during this period.
(9) Invalidation litigation
Regarding trademark applications, in case of grounds for invalidity as provided in Art. 151 of the Industrial Property Law (usurped application, etc.), it is possible to request invalidation of the said trademark right. The term of validity of the action varies depending on the ground for invalidity.
It also seems that the IMPI refuses registration if it finds an usurped application on its own accord.
(10) Ex officio cancellation of trademark rights
The Mexican trademark law provides that the ex officio cancellations of trademark rights due to administrative reasons are possible. In practice, decisions of ex officio cancellations are very rare.
(11) Abandonment of trademark right
The owner of a trademark right may submit a petition for the cancellation of a trademark right to the IMPI and thereby voluntarily cancel the registration.
(12) Trademark licenses
If licensing agreement (right of non-exclusive use, etc.) are made, it is necessary to register the license with the IMPI.
In Mexico, if the fact of a licensing agreement is not registered with the IMPI, the use through the owner of the right of use is not found to be valid.
See below for Mexico’s status regarding the following major treaties:
|Paris Convention||WTO Agreement||Patent Law Treaty||Madrid Protocol||Nice Agreement|