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Latest News: Aug 22, 2018 (Newsletter Issue 14/18)
Requirement for Declaration of Use Now
Important amendments to the Mexican Law of Industrial Property have been published in the Federal Official Gazette on May 18, 2018, as reported earlier. The amendments came into force on August 10, 2018.

Under the new Law, declarations of use must be now filed at two points during the life of a registration:

- Within three months following the third anniversary of a trademark registration, counted from the date of registration, applicable to trademarks which are granted registration on or after August 10, 2018.

- At the time of filing for renewal application, which is every ten years counted from the application date of the trademark. This will be applicable to all trademarks which become due for renewal on or after August 10, 2018.

Further, no evidence of use needs to be filed, but rather only the completion and execution of the Declaration of Use Official Form yet to be published by the MPTO will be required.

With regard to International Registrations designating Mexico the declaration of use must be filed within three months following the third anniversary of the date on which the MPTO grants registration of the International Registrations (date of the National Certificate of Registration that is issued by the MPTO.

For further detailed information on the declaration of use and other amendments, please see here


Source: www.dumont.mx

Jun 14, 2018 (Newsletter Issue 11/18)
Amendments to IP Law into Force Soon
On May 18, 2018, the Amendment Bill to the Industrial Property Law was published in the Official Federation Gazette. The Amendment Bill changes the trademark law in Mexico. The Bill will be enacted after 60 working days.

Relevant changes are the following:
- “Any person” may register a mark (Article 87). The law previously stated that only “industrialists, traders and service providers” may apply for registration.
- Marks need no longer be visible to be registered (Article 88). A mark need only be perceptible by the senses, and capable of being represented so that it is clear exactly what is being protected.
- Some types of non-traditional marks that were previously denied protection will now be registrable, including sounds, scents, holograms and trade dress (Article 89).
- Descriptive terms, terms in common use and nondistinctive trade dress previously ineligible for registration will now be registrable, based on secondary meaning (Article 90).
- Applicants may now overcome a refusal based on confusing similarity by obtaining the express consent of the prior trademark owner (Article 90).
- The provisions relating to collective marks have been expanded and clarified (Articles 96-97 bis 1).
- Certification marks will now be registrable (Articles 98-98 bis 4).
- Applications for registration must now identify “specific” products or services (Article 113).
- The provisions governing trademark oppositions have been modified (Articles 120-125). The trademark opposition proceeding will include the possibility to file the corresponding evidence by the opponent and the solicitant. Also, IMPI will have to issue a resolution with respect the opposition.
- Registrants must now file a declaration of continued use during the three months after the third anniversary of the registration date (Article 128). The registration will lapse automatically if the declaration is not filed.
- A trademark registration may be declared invalid if it was “obtained in bad faith” (Article 151.VI).


Source: Arochi & Lindner, Mexico

Mai 08, 2018 (Newsletter Issue 9/18)
Regulation on Patents, Utility Models and Designs Amended
In the Official Gazette of March 13, 2018, edition some amendments to the current Mexican Industrial Property Law have been published. All changes entered in force on April 27, 2018.

Some amendments affect the current regulation concerning patents, utility models and designs. The most important changes are the following:
- Utility Model and Industrial Design applications will now be published as soon as the formal examination is completed. Divisional patent applications will also be published. Under the current law publication is not carried out for such type of applications.
- The timeframe in which third parties may file relevant documents against Novelty or Inventive Activity of a given published Patent application is shortened, now, it will be only of two months after the publication takes place (the current period is of 6 months).
- The lifetime of a Industrial Designs is extended up to 25 years in which the Industrial Design will have to be renewed for periods of 5 years.
- Industrial designs already granted may extend their protection for an additional 10 years period once the currently 15 years has expired in order to totalize a maximum of 25 years of protection.
- Industrial Design applications still pending may be eligible for adopting these reforms, provided that the corresponding petition is filed before the Mexican Patent Office within 30 working days after the entry into force of the above mentioned reforms. The modifications to the Industrial Designs prosecution has the aim to prepare Mexico into an eventual adhesion to the Hague System.


Source: www.herreroyasociados.com

Apr 26, 2018 (Newsletter Issue 8/18)
IP Law Reform Package Approved
The Mexican Senate approved a package of reforms to the provisions of the “Ley de la Propiedad Industrial” (IP Law) comprising important changes to the protection of trademarks in Mexico. Some of the important changes are as follows:

Trademark Use
It will be required to declare actual and effective use of a trademark three years from registration of a mark. If this declaration has not been made, the registration will be considered as lapsed.
It will also be required for renewals to declare the actual and effective use of the trademark.

Nullity action based on bad faith
Nullity claims based on bad faith will no longer be restricted to registrants who are agents, representatives, users or distributors of the owner. It will be sufficient that there has been any kind of direct or indirect relationship between the bad faith registrant and the owner of the prior rights.

Non-traditional trademarks
Holographic signs, sound and smell marks will be registerable.

The reform package will soon be published within in the Official Gazette of the Federation of Mexico. It is expected that the reforms will enter into force 60 days after its publication.

For further information, please click here


Source: www.hoganlovells.com

Okt 12, 2016 (Newsletter Issue 18/16)
Opposition Procedure Against IR in Force
The Mexican Institute of Industrial Property (IMPI) informed WIPO that the new opposition procedure, which entered into force on August 30, 2016, also applies to international registrations designating this country and subsequent designations of Mexico notified to IMPI as from that date.

IMPI will republish the international registrations and subsequent designations under the respective national filing numbers in its online Industrial Property Gazette within a maximum period of 10 working days upon receipt of such notification. The opposition must be filed to IMPI directly within a non-extendable period of one month, drafted in Spanish and subject to payment of a fee.

Within a maxiumum period of 10 working days after expiry of this deadline, IMPI will publish a list of opposed marks. Documents relating to the opposition will be available online at the IMPI records consultation service. Holders of opposed international registrations or their local representatives may respond to the opposition within a non-extendable period of one month thereafter. The response must be drafted in Spanish, filed directly with IMPI and bear an address in Mexico for the purpose of receiving notifications. Failure to respond is not construed by IMPI as tacit acceptance of the claims made by the opposing party. The opposition does not suspend the IMPI procedure for determining whether it should grant protection or prolong the time limit for reaching that decision.

Upon expiry of the opposition period and of the response period, where appropriate, IMPI will conduct the substantive examination, during which it may consider the claims made by the opposing party and the holder during the opposition proceedings, as well as any other material deemed relevant to the examination.

Upon completion of the substantive examination, IMPI will send a statement of grant of protection or an ex officio notification of provisional refusal, as appropriate, to WIPO, and also communicate its decision to the opposing party. WIPO will transmit a copy of the notification or statement to the holder of the international registration.

For further information, please check here

Source: www.wipo.int


Aug 30, 2016 (Newsletter Issue 15/16)
Opposition System Now Available
A new opposition system has been implemented in Mexico as of August 30, 2016.

The Mexican Institute of Industrial Property (IMPI) needs to publish the trademark application in the Industrial Property Gazette within 10 business days from the filing date. The applications will be subjected to formal examination.

Third parties can file an opposition within one month of the date of its publication in the Gazette. An extension of this opposition period is not allowed. After that a list of those applications that were opposed will be published in the Gazette within the following 10 business days.

The following needs to be noted:
- The opposition will not result in a suspension of the registration process.
- Opposing an application does not grant the opposing party a status as an interested third party.
- The opposition shall not automatically determine the outcome of the in-depth examination carried out by the MTO.
- The MTO may consider in its analysis the opposition and statements made in response by the applicant.

With the new system third parties receive the possibilities to file information, evidence, and documentation regarding their respective marks that will allow IMPI to better assess the registrability of a distinctive element in a new application.

Source: Hogan Lovells, Mexico and Bufete Soni, Mexico


Jun 14, 2016 (Newsletter Issue 11/16)
Trademark Opposition System Soon Available
The Chamber of Deputies approved a Decree amending the Mexican Industrial Property Law (IPL) to implement a trademark opposition system in Mexico on April 28, 2016. The Decree was published in the Official Gazette of the Federation (Diario Oficial de la Federación) and will become effective on August 30, 2016.

The Mexican Trademark Office’s (MTO) needs to publish the trademark application once it is has been received within 10 business days in the Gazette and carry out a formal examination of the same, as well as the documentation filed, to determine whether the requirements specified in this Law and its Regulations are obeyed.

Third parties can now file an opposition within one month of the date of its publication in the Gazette. No extension of the one month opposition period is allowed. After that one month opposition period expires, a list of those applications that were opposed will be published in the Gazette within the following 10 business days.

The following needs to be noted:
- The opposition will not result in any suspension of the registration process;
- Opposing an application does not grant the opposing party any status as an interested third party;
- The opposition shall not automatically determine the outcome of the in-depth examination carried out by the MTO; and
- The MTO may consider in its analysis the opposition and statements made in response by the applicant.

Under the prior system an in-depth examination of an application was carried out by the MTO based on the information or documentation at hand.

With the new system third parties receive the possibilities to file information, evidence, and documentation regarding their respective marks that will allow the MTO to better assess the registrability of a distinctive element in a new application. By this a new registration that could infringe or jeopardize previously granted rights will be weakened.

For further information on how the opposition system will work, please check here

Source: Hogan Lovells, Mexico and Bufete Soni, Mexico


Mai 18, 2016 (Newsletter Issue 9/16)
Draft Amendments to TM Opposition Approved
The Mexican Senate has discussed and approved the draft amendments that will introduce the trademark opposition procedure in the Mexican IP Law.

According to the draft, the trademark opposition procedure would imply the following particulars:

PUBLICATION
After the trademark application is filed, it will be published in the IP Gazette no later than 10 days after the filing date. The formal examination of the trademark application would start at the publication.

OPPOSITION
An opposition may be based on absolute and/or relative grounds. Any third party is entitled to file an opposition.
- The opposing party shall include all the documents in support of its opposition.
- Official fees will be payable. The fees have not been set by the Mexican Trademark Office (MTO) yet.
- In addition, according to the proposed amendments:
i. The opponent will not be recognised as a third interested party.
ii. The examination of the application will continue alongside the opposition procedure, and the prosecution of the application will thus not be in abeyance until the opposition is decided.
iii. The MTO is not obliged to take into consideration the arguments included in the opposition in its examination.

SECOND PUBLICATION
A second publication will take place in order to notify the applicants of the relevant oppositions (if any). This publication will be 10 days after the one-month opposition term has expired.

APPLICANT’S RESPONSE
The applicant will be granted a one-month term (as from the date of the Second Publication) in order to contest the opponent’s grounds of refusal.

SUBSTANTIVE EXAMINATION
During the substantive examination of the application, the MTO will decide the relevant opposition as well as other grounds of refusal that the Examiner might identify.

SERVICE TO THE OPPONENT
The MTO will inform the opponent of its final decision.

Source: Dumont Bergman Bider & Co., S.C., Mexico


Feb 17, 2016 (Newsletter Issue 3/16)
Official Fees Increased
The Mexican Institute of Industrial Property (IMPI) has increased its official fees between 5 to 10 percent for services. The increase became effective on January 1, 2016.

The fees for filing a trademark have increased by 6.7 percent and trademark renewals by 8 percent. The fees for filing utility models and industrial designs have increased 5.1 percent.

The new official fee for filing a trademark is MXN 2,457.79.

Source: www.moellerip.com


Feb 02, 2016 (Newsletter Issue 2/16)
Status Quo Regarding Opposition System
On December 14, 2015, the Mexican Senate approved the proposed amendment to the Mexican Industrial Property Law (IPL) which aims to establish an opposition proceeding related to trademarks. The amendment was sent to the Chamber of Deputies and has to be studied and voted. It is proposed that the reform to the IPL, if passed by Congress, would become effective after 90 calendar days of its publication in the Official Gazette of the Federation.

The proposed amendment includes the following aspects:

- The Mexican Institute of Industrial Property (IMPI) shall proceed, within 10 business days, with its publication in the Gazette.
- This publication shall be the starting point of the opposition.
- The opportunity to oppose shall be granted to anyone, who might consider that the application violates the provisions of the Mexican Industrial Property Law (IPL).
- The opposition period shall be one month, non-extendable.
- An opposition will not suspend the examination and registration procedure nor will it prejudge whether the application is eligible for registration or not.
- Opposition does not automatically grant the role of interested party, third party or party, to the person or entity who filed it.
- The applicant shall have one non-extendable month from the effective date of the notification to file arguments related to the statements of the opponent. Failing to do so would not be deemed a tacit acceptance of the opposition.
- IMPI may consider, in its analysis, the opposition and the allegations filed by the applicant of the registration.

For more information, please click here and here

Source: Hogan Lovells, Mexico and Herrero & Asociados, Spain/Mexico


Nov 19, 2012 (Newsletter Issue 17/12)
Accession to Madrid Protocol
Mexico has deposited his country's instrument of accession to the Madrid Protocol on November 19, 2012. The treaty will enter into force with respect to Mexico on February 19, 2013. It brings the total number of members of the international trademark system to 89.

Source: www.wipo.int


Mai 15, 2012 (Newsletter Issue 8/12)
Accession to Madrid Protocol
On Wednesday April 25, 2012, Mexico's senate approved the accession to the Madrid Protocol. At this moment it is unclear when it will be enforced or what will happen with the opposition system, since the Mexican Intellectual Property Law does not contemplate opposition.

Source: SAC Abogados, Mexico


Mai 14, 2012 (Newsletter Issue 8/12)
IP Regulation Modified
Intellectual Property regulations in Mexico were recently modified due to the amendments to the Industrial Property Law (IPL) that were published the on January 27, 2012 in the Mexican Official Gazette, and became effective on January 30, 2012.

The amendments to the IPL include changes in connection with the service of notice of official communications issued by the Mexican Institute of Industrial Property (MIIP), the legal implications of disallowing the practice of a visit of inspection to the MIIP’s commissioned inspectors, the inclusion of new causes for infringement of IP rights, as well as a new penalty for those infringement actions committed with the knowledge that an infringement was being committed.

For further information, please also check the article of Mr. Eugenio Ruíz from Becerril, Coca & Becerril here

Source: Becerril, Coca & Becerril, Mexico


Jul 01, 2011 (Newsletter Issue 9/11)
Change of Requirements for Claiming Priority
As of June 13th, 2011, the certified copy of foreign applications for trademarks is no longer required for claiming priority. Providing the filing date and number will suffice.

Source: NJQ & Associates


Okt 11, 2010 (Newsletter Issue 15/10)
Fees and Services Amended
The Mexican Institute of Industrial Property (IMPI) has revised fees for services rendered by IMPI with respect to patents, utility models, industrial designs and layout designs of integrated circuits, trademarks, slogans, trade names, appellations of origin, protection of industrial property rights and copyright in trade, technical information services and other general services such as issuing copies, certification and registration.

These amendments take effect on October 11th, 2010.

Source: www.impi.gob.mx and Novopatent International Service, S.C.


Sep 01, 2010 (Newsletter Issue 14/10)
No Power of Attorney Needed
According to the amendment to Article 181 of the Mexican Law of Industrial Property it is now possible to file trademark, tradename and slogan applications before the Mexican PTO with no need of a Power of Attorney, but simple asserting under oath to tell the truth that someone is empowered to act on behalf of applicant(s).

This new provision entered into effect on January 7, 2010, and it is applicable to applications filed before the Mexican PTO as from January 7, 2010.


Source: www.novopatent.com

Nov 17, 2009 (Newsletter Issue 4/09)
New Online Services of Industrial Property Institute
The Mexican Institute of Industrial Property has been improving the electronic services that it provides to the public. In recent years it has created Banapat - a patent and trademark database that logs the publication of patent applications and granted patents, utility models and designs - and MarcaNet, which allows the public to access general information online and consult the status of trademark applications and registrations.

The institute has recently introduced a number of other services.

The Industrial Property Documents Viewfinder - known as ViDoc - allows users to search for, consult and download publicly available institute files on:

- Applications and registrations for trademarks, patents, utility models and designs;
- Litigation (once resolved); and
- Bibliographical files on patents.

ViDoc makes consulting files quicker and more efficient, as users need no longer consult MarcaNet and Banapat individually. Moreover, the two databases provided only general information, whereas ViDoc allows users to view complete files online. Thus, original hard copies must be consulted only where there has been a change of ownership or where the file relates to ongoing litigation, as some writs may not have been documented in the electronic search system.

The Industrial Property Information System's website contains virtual copies of the institute's Industrial Property Gazette for reference and download. These publications include information regarding:

- Publication of patent applications;
- Granted and abandoned patents, utility models and design registrations, trademarks, trade names and slogans;
- Changes of ownership and trademark renewals; and
- Notifications and declarations relating to litigation.

Another online system - the Payment Site and Administrative Services - allows for online payment of government fees. After making a payment using the service, the payer must print a receipt and file it with the institute, together with the relevant briefs. In the event of a payment error or a last-minute decision not to proceed with the filing of a brief, the official receipt can be cancelled and the funds recovered, provided that the receipt has not already been filed.

Solmarnet is a new system for filing trademark applications online. Once the trademark application form is completed online, it is printed and the system generates a reference number. This number indicates the time at which the application was filed with the institute. There is no need to present a separate trademark application, as the Solmarnet application is in the required format. The reference number allows data to be uploaded automatically from Solmarnet and entered directly into the institute's records, which helps to avoid typographical errors. However, the reference number does not constitute proof of filing with the institute. The system can also be used to refile an application in order to correct errors or add missing information.

The institute's new services are free and have been developed to facilitate its management of industrial property matters by making it easier to consult and file information.

Contributed by Amalia Bagües, Becerril, Coca & Becerril SC, Mexico, on November 16th, 2009.


Legal basis in the Industrial Property Law and its Regulations, in force since June 27th, 1991; last amendment: May 18, 2018.
Mexico is a member of the Madrid Protocol.
Trademark protection is obtained by registration. The right to use a trademark can also be acquired by commercial use; however, this right may be sought during a statutory period.
The general rule of the Mexican IP system is first to file, but in case of litigation or conflict the previous IP use can be enforced against the registration and, therefore, the owner who proves previous use may get the cancellation of the registration before 3 years after final registration of the trade mark which is being challenged.
Nice classification, 11th edition
Registrable as a trademark are all distinctive and representable signs, such as words, names, acronyms, devices, three-dimensional forms, sounds, smells, holograms, titles of intellectual or art works, and names of television and radio programs and any combination of the mentioned signs (Art. 89).
Isolated letters, digits or colors, may not be registered as trademarks, UNLESS combined or contain elements such as signs, designs or names that add them distinctive character (Art. 90)
The following trademark types are registrable: trademarks, service marks, collective marks, trade names, slogans, certification marks, non-traditional marks and trade dress (Art. 89).
The application is filed at the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) (IMPI).
A separate application has to be filed for each class.
Foreign applicants need a local agent.
No power of attorney is required for filing the application but the attorney of record is to keep one in his files. For litigation proceedings, a certified and legalized/Apostilled POA is required.
Foreign applicants do not need a domestic trademark registration.
The application process comprises an administrative stage (the formal examination) and a substantive stage, which includes the examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive by the Examiner are rejected. Rejections can be appealed with the IP Branch of the Federal Tribunal on Administrative Matters and further appeal on the last available instance with the Collegiate Courts.
The processing time from first filing to registration or first office action is approx. 8 to 10 months.
After registration, the trademark is published in the trademarks “Gazette”.
Trademarks can be applied for by anyone.
Some electronic services have been introduced by the Trademark Office recently to facilitate its management of industrial property matters, such as electronic filing of applications. Fees can be paid online and the Industrial Property Gazette can be viewed online.
National:
As of August 30, 2016, a new opposition system is available. The Trademark Office will publish the trademark applications for opposition purposes within 10 business days from its filing, in the Gazette. Third parties can file an opposition within one month from publication in the Gazette and no extensions beyond this term are available. Oppositions will be published in the Gazette within the following 10 business days.
Closing arguments will be accepted within two days after the disposal of evidence and at the call of the IMPI before a decision is rendered. Examination will resume on completion of the opposition process as oppositions will stay prosecution of the application.

Details regarding the Opposition Period against designation of IR Mark are available in our publication on this topic here
A trademark registration is valid for 10 years from filing date. The registration is renewable for periods of 10 years provided that use of the mark in each of the goods / services covered with the registration had taken place during the preceding three years. An affidavit of “real and effective” use needs to be filed along with the renewal application, together with a description of the specific goods / services upon which the mark is being effectively used.
The grace period for renewals is 6 months from due date.

Further practical details are available in our publication on this topic here
No previous use is required to file a trademark application and to obtain registration. However, if the mark has been used in México and if use can be demonstrated it is advisable to claim the same with the application.
A Declaration of “real and effective” use needs to be filed in the first 3 months after the 3rd year from issuance. If the trademark has not been used within 3 years from registration it would not be possible to file the required Declaration of Use and the registration will thus expire. Further, lack of use during more than three consecutive years will place the registration subject to cancellation proceedings by a third interested party.
If the mark will not be used for a long period of time, it is also possible to re-file the mark every three years to avoid the same to become susceptible of being cancelled and to maintain its registration.

Further practical details are available in our publication on this topic here
The new official fee for filing a trademark application is MXN 3,126.41.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
Sep 06, 2018
Calderón & De La Sierra, Mecico DF, Mexico

Mrz 20, 2017
Merida IP - The Legal Company, Mexico City, Mexico

Sep 30, 2015
Merida IP - The Legal Company, Mexico City, Mexico

Mrz 07, 2014
Merida IP - The Legal Company, Mexico City, Mexico

Feb 27, 2014
Moeller IP Advisors, Buenos Aires, Argentina

Feb 21, 2013
Becerril, Coca & Becerril, S. C., México D.F., Mexico
Sac Abogados, México, D.F., Mexico

Apr 09, 2012
Novopatent International Service, S.C., Cuernavaca Morelos, Mexico

Nov 18, 2010
Moeller IP Advisors, Buenos Aires, Argentina

Nov 02, 2010
Novopatent International Service, S.C., Cuernavaca Morelos, Mexico



ae Aaron Estrada Legal

Cerro del Cubilete 7, Campestre Churubusco, Coyoacan
04200 Mexico
Mexico (MX)

Merida IP - The Legal Company

Ref. de Tula 68
04410 Mexico City
Mexico (MX)

Langlet, Carpio y Asociados, S.C.

Prol. Paseo de la Reforma 61 PB B-1
01330 Mexico, D.F.
Mexico (MX)

Instituto Méxicano de la Propiedad Industrial (IMPI)
Administrative Office
Av. Periférico Sur No. 3106
Col. Jardines del Pedregal
01900 México, D.F.
Mexico
Tel +52 53 34 07 00
Fax +52 56 24 04 06
Mail buzon@impi.gob.mx
www.impi.gob.mx


Public Attention Office
Instituto Mexicano de la Propiedad Industrial (IMPI)
Arenal No. 550,
Col. Pueblo Santa María Tepepan
Del. Xochimilco
16020 México
Mexico

World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int