Nov 05, 2020 (Newsletter Issue 18/20)New Federal Law for Industrial Property in Force NowOn November 5, 2020, the new Federal Law for the Protection of Industrial Property (FLPIP) entered into force. As previously reported, the purpose of the new law is to adapt local legislation to the commitments made by the Mexican Government during the negotiations of the USMCA, the treaty which replaces NAFTA.
For further information on the relevant changes, please check here (Newsletter Issue 14/20 from Sep 10, 2020).Source: Source: www.basham.com.mx; www.frosszelnick.com Sep 24, 2020 (Newsletter Issue 15/20)Operations as Depositing & Accessing Office of WIPO DAS to Commence SoonThe Mexican Institute of Industrial Property (IMPI) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS) that IMPI would commence operation as both a depositing Office and an accessing Office of WIPO DAS with effect from November 3, 2020.
Technical and operational options adopted by IMPI are:
- IMPI as a depositing Office will deposit certified copies of patent, utility model and industrial design applications as priority documents, including PCT applications filed at our Office on and after November 3, 2020, which the applicant specifically requests be made available to the service.
- IMPI as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by November 3, 2020.
- All documents and information will be exchanged in greyscale or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI; As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office, namely The Hague International applications, PCT International applications, national industrial design applications, national patent applications and national utility model applications.
For more information, please click hereSource: www.wipo.int Sep 10, 2020 (Newsletter Issue 14/20)New Federal Law for Industrial PropertyOn November 5, 2020, a new Federal Law for the Protection of Industrial Property (FLPIP) will come into force in Mexico. The new law follows the implementation of the United States–Mexico–Canada Agreement (USMCA) on July 1, 2020. The FLPIP will replace Mexico’s Industry Property Law and aims to align Mexican legislation with the USMCA.
Some of the relevant changes are the following:
- Validity of trademarks, slogans and trade names will be counted from the registration date. This will apply for registrations granted after November 5, 2020.
- Declaration that the goods/services are non-deceptive and are free of bad faith when filing and renewing a trademark will be mandatory.
- Declaration of use will only apply in connection with trademarks granted after August 10, 2018. If a declaration of use is not filed, the registration is automatically cancelled. Also, goods/services not included in a use declaration will be automatically cancelled.
- The new law states that not only identical signs but confusingly similar signs to geographical indications and appellations of origin will be objected.
- The definition of bad faith has been narrowed. Now, bad faith is understood as “having applied for the registration of a sign for the purpose of obtaining an undue benefit or advantage to the detriment of its legitimate owner.”
- Letters of consent will be acceptable not only in connection with confusingly similar trademarks but in relation with identical as well.
- After the examination of a trademark, the examiner will issue only one office action comprising formal requirements, citing substantive objections, and informing of any opposition filed against the application. Before it was two office Actions.
- The term to respond to an opposition will be two months instead of one. Such term may be extended.
- The recordal of a license agreement is no longer mandatory. Voluntary recordals are available. Owners still need to prove the licensor-licensee relationship in non-use cancellation actions.
- It becomes easier to have a trademark declared famous or well-known. The trademark needs to gain a "global diffusion or recognition".
- Certification trademarks will be registrable.
For more Information, please click hereSource: www.basham.com.mx; www.frosszelnick.com Apr 30, 2020 (Newsletter Issue 6/20)
Accession to Hague Agreement on International Registration of Industrial Designs
On March 6, 2020, the Government of the United Mexican States deposited with WIPO its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act will enter into force, with respect to the United Mexican States, on June 6, 2020.
Source: www.wipo.int
Oct 21, 2019 (Newsletter Issue 15/19)New Electronic Services PortalThe Mexican Institute of Intellectual Property (IMPI) has introduced a new electronic services portal.
The following services are provided:
- Application for registration of trademarks and patents
- Review of existing trademark and patent records
- Make payments and receive the invoice
- Consult the notices of your administrative declaration procedure
- Registration of power of attorney
An e-mail address and a unique Population Registration Code (CURP) are required to use this service. For more information, please click hereSource: www.eservicios.impi.gob.mx; www.merida-ip.com Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationMexico has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Feb 14, 2019 (Newsletter Issue 2/19)
First Non-traditional Trademarks Granted
The Industrial Property Mexican Institute (IMPI) has delivered the first non-traditional trademarks registration certificates within the scope of olfactory marks, sound and commercial image since the amended Mexican Industrial Property Statute entered into force.
The registration certificates have been granted to the following applicants:
- Olfactory mark to Sureste Sustentable S.A. de C.V. for a bamboo-smelling paint
- Trademark of commercial image to Germán Flores, designer, for a decorative pot of three pieces in the form of figurine
- Smell mark to Hasbro, Inc. for a toy modelling dough that smells of a combination of sweet with a vanilla-dyed fragrance, cherry and the natural scent of dough based on wheat flour
- Sound mark to Grupo Gran Café de la Parroquia de Veracruz S.A.P.I. de C.V. for the sound that evokes images and memories: a spoon that strikes three times the glass of the coffee
Source: www.twobirds.com; www.gob.mx
Oct 11, 2018 (Newsletter Issue 17/18)Declaration of Use for International Registrations Designating Mexico RequiredWIPO informs that the Mexican Institute of Industrial Property (IMPI) has provided information regarding amendments to the Mexican Industrial Property Law which entered into force on August 10, 2018.
Holders of international registrations containing the designation of Mexico must file now a declaration of actual and effective use of the mark. Such declaration shall be filed directly with IMPI in the appropriate official format, as prescribed by the applicable laws and regulations and upon payment of a fee:
- within a three-month period, following three years counted from the date
on which protection was granted in Mexico, as specified in the declaration sent by IMPI to the International Bureau of WIPO pursuant to Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement; and
- within three months from the notification of the renewal of the
international registration by the International Bureau of WIPO as from August 10, 2018.
The declaration of actual and effective use of the mark must be filed by the holder’s authorized representative with a local address, or by a legal representative in Mexico. A local address is required for purposes of notification.
On failure to file the declaration of actual and effective use within the prescribed time limits, IMPI shall declare, ex officio, the cancellation of the mark that is the subject of an international registration containing a designation of Mexico. IMPI can be contacted for further information.
For further information on the notice, please click hereSource: www.wipo.int Aug 22, 2018 (Newsletter Issue 14/18)Requirement for Declaration of Use NowImportant 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
May 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 ApprovedThe 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 hereSource: www.hoganlovells.com Oct 12, 2016 (Newsletter Issue 18/16)Opposition Procedure Against IR in ForceThe 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 AvailableThe 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
May 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 SystemOn 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
May 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
May 14, 2012 (Newsletter Issue 8/12)IP Regulation ModifiedIntellectual 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
Oct 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.
The new Federal Law for the Protection of Industrial Property came into force on November 5, 2020.
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. However, in case of litigation or conflict, an owner who proves prior use can enforce his right against the registration unless 5 years have passed after the final grant of the challenged trademark.
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. 172).
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 or where as a result of the use in commerce of the goods or services for which the trademark is registered, it has acquired a distinctive quality in the national territory (Art. 173).
The following trademark types are registrable: trademarks, service marks, collective marks, trade names, slogans, certification marks, non-traditional marks and trade dress (Art. 172).
The application is filed at the Mexican Institute of Industrial Property “IMPI” (Instituto Mexicano de la Propiedad Industrial).
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.
After the examination of a trademark, the examiner will issue an office action comprising formal requirements, citing substantive objections, and informing of any opposition filed against the application. Before it was two office Actions.
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. 6 to 8 months.
After registration, the trademark is published in the trademarks “Gazette”.
Trademarks can be applied for by anyone.
Electronic filing of applications is possible, fees can be paid online and the Industrial Property Gazette can be viewed online as well.
National:Trademark applications are published in the Industrial Property Gazette for opposition purposes within 10 business days from filing. Third parties can file an opposition within one month from publication. No extensions beyond this term are available. The opposition writ are no longer published in the Gazette, they are notified through the official action regarding the formal and substantive requirements.
The applicant may file allegations against the opposition when IMPI issues an official communication citing anticipations and will have a term of two months, which can be automatically extended for another two months, to do so. Closing arguments will be accepted within five days after the disposal of evidence before a decision is rendered. The opposition will be substantiated during the application procedure.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
As of November 5, 2020, the trademark registration is valid for 10 years from the granting date (previously from the 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 has taken place during the preceding three years. A declaration 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 declaration of use must be submitted under oath three years after the granting date of the trademark registration. If such a declaration is not filed within a three-month period after the three-year anniversary of the granting date, the trademark registration will lapse.
Online you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
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