Trademarks in Mexico

TM protection in Mexico can be granted to any TM which helps distinguish a company’s services & goods from those of its competitors. Protection for unconventional TMs in the Republic of Mexico extends to smells, motions, audio, colors & designs. 

Benefits of Registering a TM in the Republic of Mexico

It only takes filling out an application form to register a TM in the Republic of Mexico. Applicants aren’t required to submit a PoA; however, it must be provided before an application is filed. Registering TMs online in the Republic of Mexico is also available; in this case, applicants can count on a ten percent discount. Signing an e-application for registering a TM in the Republic of Mexico must be preceded by opening a bank account in the Republic of Mexico. 

Time & Cost

Normally, processing an application takes no more than half a year. Having a registration certificate issued costs three thousand one hundred twenty six Mexican pesos.

Applying for TM registration in the Republic of Mexico involves:

• registering a phrase or word (for smells & sounds a TM description must be provided);
• specifying a country where an application is filed (serial number ( date included);
• specifying when a TM was first used or providing a confirmation it wasn’t used yet;
• specifying an applicant’s registered legal address;
• specifying a production facility’s address or head office location;
• submitting a PoA.

Furnishing untrue or incorrect information entails cancellation of TM registration.

Pre-Registration Process

Examining an application consists of 2 stages:

• a check is carried out to ensure that the necessary information is furnished; 
• a check is carried out to ensure that a TM can be registered.

If an objection is raised, applicants must respond to it within a 2-month period; there’s also the possibility of receiving two 30-day extensions.

Markings

MR lettering, @ symbol & Marca Registrada are permitted. Using abbreviated TMs isn’t considered as TM acceptance. 

Mexico: Appealing Rejected Applications for TM Registration

Decisions on rejecting an application may be challenged by submitting an appeal to the IPI or submitting a request for invalidating a TM to Mexico’s Federal Court.

Validity

TMs registered in Mexico are valid for ten years; upon expiration, they can be extended for another ten years.

Cancellation

Unregistering a TM in the Republic of Mexico requires submitting an application for voluntary cancellation.

IP

Sounds & designs can be protected by copyright. At times, the way a product looks can qualify for protection as a copyrighted work.

E-Registration of TMs in the Republic of Mexico

Protecting TMs & domain names in the Republic of Mexico is done pursuant to the IPA. That said, revoking domain names requires filing a claim with  ICANN or a local registry.

Licensing

To have legal repercussions for 3rd parties licensing agreements are to be registered with the IPI. A license’s duration, as well as services & goods for which the license has been granted/ must be clearly stated in licensing agreements.

The Republic of Mexico: TM Protection

Those wishing to protect a TM in the Republic of Mexico can do so by filing a TM infringement lawsuit with the IPI. Should a lawsuit be filed against unauthorized use of TMs, it’s necessary to ensure that it extends to services & goods that bear similarity or are identical to the ones specified in the corresponding registration documentation. 

Initiating a TM infringement procedure in Mexico starts with submitting a claim to the IPI. Documentary proof corroborating a claim is to be provided as well. Only documents’ originals or their certified copies can be accepted. Unless they’re in Spanish, a translation must be provided. 

In general, court proceedings may take up to one year & depend on the amount of evidence provided.

Only acts committed in the Republic of Mexico may be deemed infringing behavior; legal repercussions are restricted to a specific jurisdiction. Registering a TM in the Republic of Mexico requires entering it in the customs TM database.

There’s deadlines for filing a TM infringement claim in Mexico; however, a 2-year limitation period is envisaged for damages.

Appeals

The IPI’s decisions can be contested administratively or by filing a request to invalidate a decision with the Federal Court. The latter’s decisions can be contested by filing an appeal with a district court.