TRADEMARKS IN MEXICO
WHY IS IMPORTANT TO REGISTER A TRADEMARK IN MEXICO?
- Trademark registrations in Mexico, grant their holder the exclusive right to use it in connection with the goods/services it covers.
IS MEXICO A FIRST-TO-FILE or FIRST-TO-USE-SYSTEM?
- Mexico has a first-to-file system vs the US that has the other one.
IS IT POSSIBLE TO FILE MULTI-CLASS APPLICATIONS IN MEXICO?
- Isn’t possible to file multi-class applications in Mexico, single class applications must be filed.
ARE REGISTRATIONS IN MEXICO GRANTED AT A FEDERAL LEVEL? ARE THERE STATE REGISTRATIONS?
- Trademarks in Mexico are registered at a federal level and cover the entire territory. There are no state registrations.
WHERE ARE TRADEMARKS REGISTERED IN MEXICO?
- The Mexican Institute of Industrial property (IMPI), is the federal agency in charge of receiving and examining applications, issuing or rejecting registrations and deciding certain litigation proceedings.
WHAT IS THE TIMEFRAME FOR THE PROSECUTION OF A TRADEMARK APPLICATION IN MEXICO?
- Timeframe, 4-6months if no office actions are issued, or oppositions are filed.
What can be registered as a trademark in Mexico?
- Words, letters, numbers, figurative elements, color combinations and holograms. Three dimensional figures, names identifying businesses, names of individuals, sounds, scents, trade dress, combination of aforementioned.
WHAT CANNOT BE REGISTERED AS A TRADEMARK?
- Marks lacking distinctiveness
- Marks identical or confusingly similar to geographic indications.
- Name of famous persons when confusion is likely
- Image, voice, portrait or signature of a person, without consent.
- Named similar to titles of literary or artistic works
- Marks identical or similar to well known or famous trademarks
- Marks identical or similar to prior applications or registrations covering the same or similar goods/services.
Website for public search in Mexico: https://acervomarcas.impi.gob.mx:8181/marcanet
NEED INFORMATION TO FILE APPLICATION
- Make a clear description of the goods and services
- Recommendation of use class heading
- You can file your application without having any use, you don’t need evidences of use.
- You need a Power of Attorney
Cost of trademark filing?
A single class registration cost on IMPI is $160USD
Attorney fees – $1,000 USD for all the prosecution
What happens during prosecution?
- Publication: 10 days after filing
- Oppositions may be filed during a 30 day term after publication
- Once the 30 day term expires, application will be examined
- If there are formal or substantive issued, or if opposition was filed, examiner will issue office action granting a 4month term for responding.
- Application may be suspended if prior rights are cited and an invalidation or cancellation action is filed by applicant.
- Issuance of registration certificate
OPPOSITION
People who has progress in IMPI for support oppositions, learn the law and become trademark examiners. Essentially we have Attorney examiners with license. Some don’t have.
Who can oppose? At the end, anyone that considers that has plagiarize, or person that thinks that have more right. To file an opposition, you have to have a Prior Art
BASED ON ANY GROUND.
TRADEMARK OFFICE WILL ISSUED A RESPONSE 4 WEEKS OR SO LATER.
The cost to file an opposition is $240usd -$250usd
HOW DO YOU MAINTAIN A TRADEMARK REGISTRATION IN MEXICO? GENERAL ADVISE
- Trademarks must be used as registered or with modifications that don’t alter their distinctive character.
- 3 Year Decl of use counted since registration date (3 month term for filing after deadline)
- Real and effective use must be declared
- Goods and services which no use was declared, will be automatically deleted from coverage.