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 Industrial Property Law (IPL).
2 Application for a Trade Mark
2.1 What can be registered as a trade mark?
Besides the available protection for traditional trade marks, pursuant to the amendments to the IPL effective from August 10, 2018, trade mark protection for non-visible signs, such as smell marks and sound marks, as well as for certain animated marks such as holograms and for so-called "trade-dress" in a broader manner, was incorporated for the very first time in Mexico. Likewise, acquired distinctiveness will be 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 90 of the IPL, 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. If an opposition is filed, such opposition will also be published in the IP Gazette within the next 10 working days after the opposition deadline, granting the applicant a one-month term, as of the publication date, for filing its response. In accordance with the new amendments to the law effective from August 10, 2018, IMPI should take into consideration the opposition when conducting its own official examination, and will issue a decision on the opposition per se. 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. If any formal information or documents are missing, or if the products/services are not correctly classified, a requirement from the examiner regarding formalities will be issued, granting a two-month term that can be automatically extended for a further two months to comply with such requirements. The second examination refers to the "relative grounds" examination (prior rights on record) and "absolute grounds for refusal" examination (inherent registrability of the mark). Thus, if prior rights are revealed or an objection concerning inherent registrability of the mark is foreseen, the IMPI would issue an official action, granting a two-month term, that 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 amended IPL 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 amendments to the law effective from August 10, 2018, 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 amendments to the IPL effective from August 10, 2018 is quite broad, allowing the possibility of filing exotic or unusual trade marks in Mexico. Indeed, the IPL 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 87 of the IPL establishes who may use and therefore own a trade mark registration, stating: "any person, individuals or companies 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.
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Originally published by ICLG
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.