1 Relevant Authorities and Legislation
1.1 What is the relevant trade mark authority in your jurisdiction?
The relevant authority is the Mexican Institute of Industrial Property (IMPI).
1.2 What is the relevant trade mark legislation in your jurisdiction?
The most pertinent legislation is the Federal Law for the Protection of Industrial Property (FLPIP).
2 Application for a Trade Mark
2.1 What can be registered as a trade mark?
Traditional trade marks, besides non-visible signs, such as smell marks and sound marks, as well as certain animated marks such as holograms and so-called “trade dress” in a broader manner, can be registered as trade marks in Mexico. Likewise, acquired distinctiveness is recognised as an exception to the absolute grounds for refusal established in law.
2.2 What cannot be registered as a trade mark?
The limitations as to what cannot be protected as a trade mark are established in article 173 of the FLPIP, which is a list of prohibitions and the only legal source for rejecting a trade mark application. These prohibitions include:
- marks that are identical or confusingly similar to previously
registered marks or marks for which registration is pending or
applied to the same or similar products or services. However,
consents and coexistence agreements are now recognised as valid
means to overcome relative grounds objections;
- descriptive and generic marks, though acquired distinctiveness
is a valid means to overcome absolute grounds objections;
- geographic indications and names of places that are
characterised by the manufacture of certain products; and
- three-dimensional forms of common usage, or because said form is imposed by its nature or industrial function.
2.3 What information is needed to register a trade mark?
The following information is required:
- An applicant's full name and street address, including town and country.
- Representation of the trade mark.
- Description of goods or services.
- Use in commerce in Mexico. Non-use basis applications are allowed under Mexican law, since use in commerce is not a requirement for obtaining registration. However, if the trade mark is already in use in Mexico, it is recommended to provide the full date (day, month and year). This first-use information becomes relevant for the applicant to be afforded priority rights over future applicants who eventually intend to challenge the registration based on use of a similar trade mark covering similar goods or services.
- Factory address, business address or commercial establishment (if the mark is in use in Mexico).
- Convention priority: if convention priority is to be claimed, it is required to provide the country of origin, application number, the date of filing and the exact description of the goods and services.
2.4 What is the general procedure for trade mark registration?
Once applications are filed before the IMPI, these are published for opposition in the Industrial Property Gazette within the next 10 working days, granting any interested party a one-month term, as of the publication date, for opposing the registration. In general terms, it takes from four to seven months for the IMPI to conduct the relevant examinations. The first is the formalities examination, whereby the IMPI checks that all of the formal requirements (information and documents) have been met, and verifies the correct classification of the products/services it is intended to protect. The second examination refers to the “relative grounds” examination (prior rights on record) and “absolute grounds for refusal” examination (inherent registrability of the mark). The IMPI will issue one single official action including the oppositions that were filed against the application, as well as regarding requirements in connection with the first and second examinations if formal information or documents are missing, or if the products/services are not correctly classified, or if prior rights are revealed or an objection concerning inherent registrability of the mark is foreseen, granting a two-month term, which can be automatically extended for a further two months, to respond thereto.
2.5 How is a trade mark adequately represented?
For design or composite marks, it is necessary to provide a clear print thereof. If specific colours are to be claimed, then the label must clearly show the colours. For three-dimensional marks, it is necessary to submit a photograph showing the three dimensions in the same photo – height, width and length (front and back). Regarding representation of non-traditional marks, no specific requirements have been issued at present, since the regulations to the FLPIP are yet to be published. Absurdly enough, the above situation has not prevented the Trade Mark Office from granting protection to non-traditional marks.
2.6 How are goods and services described?
In accordance with the new FLPIP, class headings cannot be claimed anymore; thus, specific goods and services should be listed, preferably using the identifications as derived from the current Nice Classification alphabetical list.
2.7 To the extent ‘exotic' or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?
The definition of trade marks in the FLPIP is quite broad, allowing the possibility to file exotic or unusual trade marks in Mexico. Indeed, the FLPIP establishes that a trade mark should be understood as “any sign perceptible by the senses”. The only condition for the protection of such signs is that these are “susceptible of being represented in a way that allows to determine the clear and precise object of protection”.
2.8 Is proof of use required for trade mark registrations and/or renewal purposes?
No proof of use is required, but a simple declaration of actual use at two stages is required, namely:
- a declaration of actual and effective use of the registered
mark to be submitted along with each renewal application (every 10
years); and
- a one-time declaration of actual and effective use, which has to be submitted within the three months after the third anniversary of the date of grant of the registration in Mexico.
2.9 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?
A Mexican trade mark registration is valid/enforceable only within the Mexican Republic.
2.10 Who can own a trade mark in your jurisdiction?
Article 170 of the FLPIP establishes who may use and therefore own a trade mark registration, stating: “[A]ny person, individual or company may use trade marks in industry, in commerce or in the services they render.” Nevertheless, the right to their exclusive use is obtained through their registration with the IMPI. In Mexican practice, any kind of person or entity is entitled to apply for a trade mark registration before the IMPI.
2.11 Can a trade mark acquire distinctive character through use?
Yes. Acquired distinctiveness was recognised for the first time in Mexican law pursuant to the amendments to the law effective from August 10, 2018.
2.12 How long on average does registration take?
If an application is considered complete and no oppositions are filed, no objections as to inherent registrability are issued and no prior references are cited by the examiner, registration may be granted within five to seven months as of the filing date. Otherwise, if oppositions are filed, or if formality requirements or references/objections are cited by the examiner, the processing of the application may take quite a long time (between 12 and 18 months), and may conclude either in the granting of the registration, or the refusal thereof.
2.13 What is the average cost of obtaining a trade mark in your jurisdiction?
If no classification requirements, oppositions and/or objections to registration are issued, the average costs for obtaining a Mexican non-priority trade mark registration are estimated at US$800.00.
2.14 Is there more than one route to obtaining a registration in your jurisdiction?
Yes. Besides the national route, as of February 19, 2013, it is also possible to obtain a trade mark registration in Mexico through the International (Madrid) System.
2.15 Is a Power of Attorney needed?
It is no longer compulsory to submit a Power of Attorney (POA) along with a trade mark application, provided that the IMPI recognises the authority of the representative signing it through a declaration under oath contained in the application form. However, a valid POA must indeed exist, and it should have been granted (dated) prior to the filing of the application, otherwise the declaration contained in the application form in connection with the representation may be deemed false, thus affecting the validity of the eventual registration to be obtained.
2.16 If so, does a Power of Attorney require notarisation and/or legalisation?
A POA is not required for a trade mark to be processed. However, for litigation purposes, notarisation and legalisation are indeed needed.
2.17 How is priority claimed?
It is required to provide, in the application form, the country of origin, application number, the date of filing and the exact description of goods and services used in the priority application. It is no longer necessary to file a certified copy of the priority application.
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Originally published by ICLG.com.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
