Trademark Registration Mexico

Our Attorneys will file your Trademark Application in Mexico and will carry out all needed tasks before the Trademark Office in order to obtain registration approval.

Our prices include the official fees.

Trademark applications are handled by Mr. Julián Vadillo G., Attorney at law.

TRADEMARK REGISTRATION PROCEDURE IN MEXICO

INFORMATION

TRADEMARKS AND SERVICE MARKS

A trademark is a sign that distinguishes goods or services form other of their same kind or class in the market.

Industrialists, merchants, or service providers may use trademarks in industry, commerce or in the services they render; nevertheless, the right to their exclusive use is obtained through their registration before the Mexican Institute of Industrial Property (Mexican Patent and Trademark Office).

These registrations are granted for specific goods or services pertaining to a single international class, according to the Nice International Classification. They are granted for renewable terms of ten years as of the filing date.

SLOGANS

These registrations are granted in connection with specific goods or services of one or several classes. The legal life of this kind of registrations is ten years counted from the filing date and is indefinitely renewable for equal terms.

REGISTRABILITY

Words, letters, numbers, designs or three-dimensional figures can be registered as marks. However, the Mexican Law of Industrial Property states as non-registrable subject matters the following:

• Animated or changing denominations or figures;
• Technical, usual or generic names of the goods or services to be protected;
• Non-original three-dimensional figures or those of common use, as well as the usual configuration of the products or that imposed by their nature, function or use;
• Denominations or figures describing the goods or services to be protected or their characteristics, qualities, value, quantity, origin, purpose or manufacturing season;
• Isolated letters, digits or colours;
• Unauthorised reproductions or imitations of official names, emblems or acronyms;
• Reproduction or imitation of official signs and seals, coins or bills;
• Reproduction or imitation of the names or graphical representation of official medals;
• Geographic denominations or names and maps, when they may cause confusion about the origin of the goods or services to be protected;

The name of a place or town for the protection of typical and characteristic goods from such place. However, the name of a private place can be recorded as a mark under owner’s authorization;

Personal names, pseudonyms, signatures and photographs without authorization from the interested person or inheritors thereof;

The title of intellectual or artistic works as well as the title of periodic publications, fictitious or symbolic characters, human characters, artistic names and denominations of artistic groups, without authorization from their owners;

Denominations or figures containing false indications about the nature, components or qualities of the goods or services to be protected;

Denominations or figures being equal or similar to a well-known mark;

Denominations or figures being identical or confusingly similar to a registered mark or a mark under registration procedure, when the related goods or services are the same and the interested parties are different;

A mark being identical o confusingly similar to an already used trade name, when the related goods or services are the same and the interested parties are different;

Translation into any languages, orthographic variation or artificial construction of non-registrable denominations.

WELL-KNOWN MARKS

The Mexican Law of Industrial Property provides special protection for those marks, which are well known in Mexico. Consequently, a mark cannot be registered for any product or service, when it is identical or similar to a well-known mark. Although the Mexican Trademark Office is entitled with a wide discretion to decide whether a mark is well known and up to what extent it is well known, the promotional activities in Mexico and abroad are considered to determine whether a relevant sector of the public or the commercial circle knows that mark and its associated goods or services.

REGISTRATION PROCEDURE

SEARCH

It is advisable to carry out a search before filing a trademark application, in order to determine if the mark is available for registration. There are two kinds of searches: phonetic and graphic.

FILING

Trademark applications can be filed on intent to use basis or indicating the exact date of the first use in the Mexican market. One application has to be filed for each International class to be protected.

Mexico recognizes priority rights according to the Paris Convention; thus the term to file an application claiming priority rights is six months from the filing date of the foreign application.

REQUIREMENTS FOR FILING

• Full Applicant’s name and nationality;
• Full Applicant’s address (number street, city, country and zip code);
• Full Address of the industrial, commercial or service premises, wherein the goods are being produced or the services rendered;
• Denomination and/or design of the mark;
• A print of the mark, when a design or specific kind of letters should be protected;
• A colour print, when colours are claimed;
• A print or photographs of the mark, showing the three dimensions, when the mark is a three-dimensional design;
• A list of the specific goods or services to be protected classified according to the Nice Agreement;
• Exact date of the first use of the mark (day, month and year) in Mexico or abroad, if any. Once the application is filed, this date cannot be amended or provided later;
• Date, number and country of the foreign application for those Convention cases wherein priority has to be claimed.

 

DOCUMENTATION

Power of Attorney.

1. - If granted by a corporation, No further notarization or legalization is required. In addition, two persons mentioning their full names and domiciles must witness this document.

2.-  If granted by an individual, no attestation or legalization required but the document should be signed by two witnesses mentioning their names and domiciles.

Certified copy of the foreign application and/or registration, from which priority is claimed.

Rules of Joint Ownership of a mark, when there is more than one applicant.

PROSECUTION

Upon receiving the application, the Mexican Trademark Office verifies that all the formal requirements are met by reviewing the application sheet, the provided documentation and information. The correct classification of the goods or services as well as the registrability of the denomination and/or design is comprised within this examination.

The second step within this procedure is a novelty examination by searching for similar or identical prior registrations or pending applications. This search is carried out in both, the International class and the corresponding National classes, which comprise the goods or services to be protected, as well as other related.

If an objection is raised, we will report the next steps to be followed in order to overcome the citation or rejection as well as the possibilities to succeed.

RENEWAL

The registrations are renewable for periods of ten years. The renewal application has to be filed within six months prior to the expiration date of the registration, and a six-month grace period after the expiration date. A declaration of use must be filed along with the renewal application.

When applying for the renewal of registrations granted under the National Classification, the goods and services protected thereby will be reclassified into the International Classification.

USE OF THE TRADEMARKS

It is compulsory to use a registered mark in Mexico in order to keep the registration in force. The use has to start within the following three years to the granting date and cannot be interrupted for three consecutive years or more; otherwise any third party could apply for the cancellation of the registration on grounds of non-use.

The mark must be used in the same form as it was registered, but some variations, which do not affect its essential features, may also be used. Likewise, products, packages, labels, tags, seals or any advertising material showing the mark, have to indicate any of the following legends: “Marca Registrada”; ® or “M.R.”. The omission of this requirement hinders a legal action against infringers.

No evidence of use has to be submitted to maintain the registration in force, unless litigation is initiated against it.

If the trademark is used by a distributor in Mexico, its is highly advisable to record a License Agreement before the Mexican Institute of Industrial Property in order to prove effective use of the trademark. It is possible to record the license against trademark registrations or pending applications.

Finally, we inform you that for Trademarks prosecution, Small Entity considerations are not allowed in Mexico, but only for Patent issues, thus, a Trademark Applicant is entitled to pay the entire official fees.

The time frame for obtaining a registration is six months as of the filing date, and this term can be extended if a rejection is raised.

MEXICAN LEGISLATION AND TREATIES

Mexican Industrial Property Law.

Regulations of the Mexican Industrial Property Law.

Paris Convention for the Protection of Industrial Property.

Nice International Classification of Goods and Services.