By Ricardo Alarcon, AVA Firm, SC
Mexico has a well-established legal framework for trademark registration, which is governed by the Federal Law for the Protection of Industrial Property. Registering a trademark in Mexico is a critical step for businesses that seek to protect their brand and prevent others from using their distinctive signs. In this article we will navigate the trademark registration process in Mexico and share insights to secure the legal protection businesses need to succeed.
Contents
1. What can be registered as a trademark in Mexico?
2. Why can you be refused to register a trademark in Mexico?
3. The process of trademark registration in Mexico
4. Documents required for registering a trademark in Mexico
5. Trademark opposition process in Mexico
6. Costs of trademark registration in Mexico
1. What can be registered as a trademark in Mexico?
In Mexico, any sign or combination of signs that are capable of distinguishing goods or services in the market can be registered as a trademark. This includes words, names, slogans, logos, designs, letters, figurative elements, and combinations of these elements. In addition, non-conventional marks, such as sounds, smells, three-dimensional shapes, and trade dress can also be registered as trademarks in Mexico, as long as they meet the necessary legal requirements for distinctiveness.
2. Why can you be refused to register a trademark in Mexico?
There are several reasons why a trademark application may be rejected in Mexico. The Mexican Institute of Industrial Property (IMPI) is responsible for studying trademark applications and determining whether or not they meet the legal requirements for registration. Here are some of the most common reasons why a trademark application may be refused in Mexico:
- Confusion with existing trademarks: If the proposed trademark is too similar to an existing trademark, it may be refused on the grounds that it is likely to cause confusion among consumers.
- Lack of distinctiveness: If the proposed trademark is too generic or descriptive, it may be refused on the grounds that it does not have the required level of distinctiveness to be registered.
- Trademarks that are likely to deceive consumers may be refused, such as trademarks that falsely suggest a connection with a well-known brand or that make false or misleading claims about the goods or services.
- Non-compliance with formal requirements: If the trademark application does not comply with the formal requirements set out in Mexican Law, such as failing to provide a proper graphic representation of the trademark or failing to pay the required fees, it may be rejected.
3. The process of trademark registration in Mexico
The process of trademark registration in Mexico generally involves the following steps:
Trademark Search: Before filing a trademark application, it is recommended to conduct a trademark search to ensure that there are no existing trademarks that could prevent the registration of your proposed mark.
Filing the Application: To file a trademark application in Mexico, the applicant must submit a written application to the Mexican Institute of Industrial Property (IMPI) along with the required fees. The application must include a clear and precise representation of the trademark, a list of the goods and services that the trademark will apply to, and other required information.
Publication: 10 days after the application, IMPI will publish the same in the Mexican IP Gazette, allowing third parties to file oppositions within 30 days after the publication.
Examination: Once the application is published, IMPI will examine it to ensure that it meets all the legal requirements for registration. If the application is incomplete or if there are any legal impediments, IMPI will notify the applicant and provide an opportunity to rectify the issues. Alongside with any obstacle or requisite, IMPI will inform if an opposition was filed against the application.
Answer to Office Action: if an Office Action is issued in the application, the applicant will have to file an answer within 4 months. Read also about trademark registration in Peru.
Resolution: After reviewing any response to Office Actions and/or oppositions, IMPI will proceed to grant or reject the application.
If the trademark is registered, the same will be in full force and effect for a period of 10 years, which can be renewed for additional periods. Also, it is worth mentioning that the trademark registration is subject to a mandatory Declaration of Use that has to be filed in the 3rd year of the registration.
It’s important to note that the trademark registration process in Mexico can take several months to complete, depending on the complexity of the application and whether any oppositions are filed.
4. Documents required for registering a trademark in Mexico
To register a trademark in Mexico, the following documents and information are generally required:
- A completed trademark application form, which can be submitted online through IMPI’s electronic system or physically at IMPI’s offices.
- A clear and precise representation of the trademark in black and white or in color. This may be in the form of a digital file.
- A list of the goods and/or services for which the trademark will be used. The list must be specified according to the International Classification of Goods and Services.
- Details of the applicant, including name, address, and legal status (e.g., individual, corporation, partnership, etc.).
- A Power of Attorney, if the application is being filed through an agent or legal representative.
- Proof of payment of the required fees.
In addition to these documents, it may be necessary to provide additional information or documentation depending on the specific circumstances of the trademark application, such as priority information, co-ownership agreement, translations, apostille, etc.
5. Trademark opposition process in Mexico
In Mexico, trademark opposition proceedings allow third parties to challenge a trademark application before it is registered. If an opposition is filed, the following process generally applies:
Filing of Opposition: Any interested party may file an opposition to a trademark application within 30 days of the publication of the trademark in the Mexican Official Gazette. The opposition must be filed before IMPI and must state the grounds for opposition.
Response: If an opposition is filed, the applicant has a period of 4 months to file a response, in which they may argue against the opposition.
Final Arguments: Once the response is filed, the parties will have the opportunity to file the final pleadings to support their respective positions.
Resolution: After considering the evidence and arguments filed by the parties, IMPI will issue a decision on the opposition.
6. Costs of trademark registration in Mexico
The related costs for trademark registration are the following but additional costs may be applied during the trademark procedure, such as, reviewing and answering an Office Action, oppositions, and granting the registration. Moreover, Mexico does not have a multiclass system, thus, the cost for additional classes is the same.
| Professional fees for one class | $320 |
| Government fees for one class | $320 |
| Professional fees for each additional class | $320 |
| Government fees for eahc additional class | $320 |
| Granting fee | $100 |
The trademark registration cost in Mexico via the iPNOTE platform starts from as low as $500, which includes all government fees and document preparation. Find the best IP attorney in Mexico on iPNOTE.
7. Final thoughts
The legal framework in Mexico provides a robust system to enforce trademark rights and prevent infringement, and the Mexican Institute of Industrial Property plays a crucial role in granting and managing trademark registrations. By registering their trademarks, businesses can establish their brands in the market, protect their Intellectual Property rights, and build consumer trust and loyalty.
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Also note: Australia trademark registration, trademark registration in UK.
