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 relevant legislation is the Federal Law for the Protection of Industrial Property (FLPIP).
2 Application for a Trade Mark
2.1 What can be registered as a trade mark?
Traditional trade marks and non-visible signs (smell marks and sound marks, as well as certain animated marks such as holograms and so-called trade dress in a broader manner) can be registered as trade marks in Mexico
2.2 What cannot be registered as a trade mark?
A list of prohibitions and the only legal source for rejecting a trade mark application is established in article 173 of the FLPIP. 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 and/ or services. However, consents and coexistence agreements are 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 needed:
- The applicant's full name and street address (including town and country).
- 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 is relevant for the applicant to be afforded priority rights over future applicants who eventually intend to obtain or claim the registration based on use of a similar trade mark covering similar goods or services.
- Factory address, business address or commercial establishment (only 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, they 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. It takes from four to seven months for the IMPI to conduct the relevant examinations. The first is the formalities examination, which is when the IMPI checks all of the formal requirements (information and documents) and verifies the correct classification of the products/services it is intended to protect. The second examination refers to the relative grounds examination (prior rights on record) and absolute grounds for refusal examination (inherent registrability of the mark). The IMPI will issue one single official action including the oppositions that were filed against the application, as well as regarding requirements in connection with the first and second examinations if formal information or documents are missing, or if the products/services are not correctly classified, or if prior rights are revealed or an objection concerning inherent registrability of the mark is foreseen, granting a two-month term, which 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, broadness and length (front and back). Regarding non-traditional marks, no specific requirements have been issued at present, since the regulations to the FLPIP are not yet published.
2.6 How are goods and services described?
In accordance with the new FLPIP, 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 FLPIP is wide-ranging, allowing the possibility to file exotic or unusual trade marks in Mexico. Indeed, the FLPIP 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?
The only requirement is a simple declaration of actual use at two stages, 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 170 of the FLPIP establishes who may use and therefore own a trade mark registration, stating: "Any person, individual or company may use trade marks in industry, in commerce or in the services they render." Namely, in Mexican practice, any kind of person or entity is entitled to apply for a trade mark registration before the IMPI.
2.11 Can a trade mark acquire distinctive character through use?
Yes, acquired distinctiveness was recognised for the first time in Mexican law pursuant to the amendments to the law effective from August 10, 2018.
2.12 How long on average does registration take?
If an application is considered complete and no oppositions are filed, no objections as to inherent registrability are issued and no prior references are cited by the examiner, registration may be granted within five to seven months as of the filing date. Otherwise, if oppositions are filed, or if formality requirements or references/objections are cited by the examiner, the processing of the application may take longer (between 12 and 18 months), and may conclude either in the granting of the registration, or the refusal thereof.
2.13 What is the average cost of obtaining a trade mark in your jurisdiction?
If no classification requirements, oppositions and/or objections to registration are issued, the average cost for obtaining a Mexican non-priority trade mark registration is estimated at US$800.00.
2.14 Is there more than one route to obtaining a registration in your jurisdiction?
Yes, besides the national route, since February 19, 2013, it is also possible to obtain a trade mark registration in Mexico through the International (Madrid) System.
2.15 Is a Power of Attorney needed?
It is no longer mandatory to submit a Power of Attorney (POA) along with a trade mark application, provided that the IMPI recognises the authority of the representative signing it through a declaration under oath contained in the application form. However, a valid POA must indeed exist, and it should have been granted (dated) prior to the filing of the application, otherwise the declaration contained in the application form in connection with the representation may be deemed false, thus affecting the validity of the eventual registration to be obtained.
2.16 If so, does a Power of Attorney require notarisation and/or legalisation?
A POA is not required for a trade mark to be processed. However, for litigation purposes, notarisation and legalisation are indeed needed.
2.17 How is priority claimed?
It is required to provide, in the application form, the country of origin, application number, the date of filing and the exact description of goods and services used in the priority application. It is no longer necessary to file a certified copy of the priority application.
2.18 Does your jurisdiction recognise Collective or Certification marks?
Collective and Certification marks are indeed recognised by the FLPIP currently in force.
3 Absolute Grounds for Refusal
3.1 What are the absolute grounds for refusal of registration?
Pursuant to article 173 of the FLPIP, which entered in force on November 5, 2020, the following cannot be registered as trade marks:
- Technical or commonly used names of products or services, or generic designations thereof.
- Three-dimensional forms, industrial designs and holograms that are part of the public domain or have become part of common use, as well as those that lack distinctiveness, are the ordinary shape of products or are the shape imposed by their nature or industrial function.
- Descriptive marks or indicative words used in trade to designate the species, quality, quantity, composition, end use, value, place of origin of the product or production era.
- Isolated letters, digits or colours, unless combined or accompanied with other elements, such as symbols, designs or denominations, that provide them with sufficient distinctive character.
- The translation, transliteration, capricious spelling variation or artificial constructions of unregistered words.
- Geographic denominations (proper or common), maps, nouns and adjectives, when they indicate the origin of products or services and may lead to confusion or error as to their origin.
- Names of population centres or places that are characterised by the manufacture of certain products, to protect such products.
- Signs that are identical or confusingly similar to appellations of origin, geographical indications, or to the names or signs of places that are characterised by the manufacture, production or commercialisation of certain products or services, when the products or services requested are identical or similar to those protected by designations of origin or geographical indications, including those signs that are accompanied by expressions such as: "gender"; "type"; "manner"; "imitation"; "produced in"; "manufactured in"; or similar expressions that create confusion for the consumer or imply unfair competition.
- Names, figures or three-dimensional forms that could deceive the public or lead to error, understood as those that constitute false indications about the nature, components or qualities of the products or services they purport to protect.
3.2 What are the ways to overcome an absolute grounds objection?
If the examiners consider that the trade mark incurs any of the absolute grounds for prohibition established in the FLPIP, an official action is issued, granting the trade mark applicant a two-month term that can be automatically extended for a further two months, to provide legal arguments against the alleged absolute grounds for refusal and to try to overcome them. Acquired distinctiveness will become relevant to overcome absolute grounds objections.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
If an application is refused by the IMPI based on absolute grounds, the applicant may choose between three different routes of appeal: I) a review recourse before the IMPI; II) an appeal before the Federal Court for Administrative Affairs (FCAA); or III) an amparo suit (Constitutional Appeal) before a federal district court.
3.4 What is the route of appeal?
- A review recourse before the IMPI
This is a remedy that must be filed before the IMPI within 15 working days from the day after the date of notification of the refusal. The review recourse is resolved by the administrative superior of the person who issued the denial at the IMPI. A review recourse is only advisable when the denial is founded on a clear mistake of the IMPI (e.g., a denial based on an alleged lack of a particular document when the document was in fact filed). If the denial is based on any of the absolute/relative grounds for refusal established in article 173 of the FLPIP, a review recourse is not advisable, as it is likely that the superior court will confirm the refusal resolution. The applicant may file an appeal before the FCAA against a decision issued by the IMPI under a review recourse.
- An appeal before the FCAA
An appeal before the FCAA can be filed within 30 working days following the date of the notification of the refusal or the decision of the review recourse. This appeal is decided by an administrative entity (it is not a court of law) that decides whether the IMPI correctly applied the Industrial Property Law (IPL).
Appeals are resolved by three administrative magistrates in public hearings, where the parties may not make oral arguments but can only hear the discussion of the case between the magistrates. All arguments must be submitted in writing during the prosecution of the appeal.
In this appeal, the applicant or appellant must prove that the IMPI's considerations to refuse the application did not comply with the provisions of the IPL. The IMPI will be the counterparty trying to prove the legality of its refusal. The losing party can make a final appeal before a federal circuit court against the decision of the FCAA. This appeal must be filed within 10 working days of the day following the notification of the decision to the losing party.
The resolution of the circuit court is final. If the IMPI loses the appeal, it must comply with the resolution within a short period.
- An amparo suit before a federal district court
Due to recent Supreme Court jurisprudence, amparo suits are now available as a further avenue to appeal refused applications. They can be filed within 15 working days of the day following the notification of the refusal. The amparo is a procedural institution, which makes it highly technical.
One advantage of these proceedings is that, due to the requirements of procedural law, cases are decided in a very short timeframe, ranging from two to five months, with stays being studied very quickly (within two days of the filing of a suit). Another advantage is the higher level of preparation of officers and judges at the courts concerning intellectual property (IP) affairs.
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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.