Are you obliged by law to register a trademark?
Registration of your trademark is not compulsory, but it is highly recommended as it grants exclusivity within the classes of your registration and the right to pursue claims against third parties.
What rights do you have if you don’t register your trademark?
You may still use your trademark in Mexico without registering it there, but at any time a third-party registration may result in a dispute, costly litigation, and the subsequent loss of rights to the trademark in question.
What happens if you don’t use your registered trademark?
A trademark must be used within 3 years of its registration date or protection may be annulled. Although use of the trademark after this time may revoke any cancellation, this would depend on there having been no third-party registration of a conflicting trademark in the intervening period.
What is the examination procedure?
There are 2 stages of examination as conducted by the IMPI (the Mexican authority on industrial intellectual property), the first is a formal examination to establish that the application is properly completed, government fees accordingly paid, and that the trademark doesn’t contravene any basic stipulations regarding language. The second is the thorough examination that will determine the success of the application or whether any additional information or amendment is required.
What classification system does Mexico use?
Mexico uses the Nice Classification, which is used by over 80 countries, including the United States. No multiple-class applications can be made, so trademarks are registered against specific goods and services as described within the Nice Classification list.
How long does it take to register a trademark?
In total the process can take up to 12 months, depending on the number of applications being dealt with by the IMPI at that time, but the registration will be valid from the initial entry date of the application.
What happens if there is a problem with my application?
Where an amendment is required or there is some information missing, you will receive written notification of this by the IMPI, and from that time have 2 months to submit the required information.
Why are applications rejected?
When trademarks are identical or very similar to other registered or pending-registration trademarks, when they are descriptive or generic marks or forms, when they contain geographic references or names that relate to certain goods or services. A more comprehensive list can be found in the list of prohibitions that is article 90 of the Law of Industrial Property.
Is there a process of appeal?
There are different avenues of appeal should an application be denied. In the case of a clear administrative error, this is a relatively simple procedure, but where there the decision is due to a technical reason, an appeal must be filed with the Federal Court of Tax and Administrative Affairs within 45 working days of notification of the denial.
Can a registration be opposed by a third party?
There is no facility for a third-party opposition to a trademark registration, although one may be cancelled if, for example, false information was tendered during the application, or if it conflicts with another used in Mexico or abroad previous to the date that the application was filed.
What special requirements are there to register a logo?
Logo designs should be submitted in gif or jpg. format in the correct color or colors where applicable.
How long is the protection valid for?
Protection is for 10 years from the filing date that the application for registration was first submitted, and may be renewed for further 10-year periods an unlimited number of times.
How do I renew my trademark registration?
A power of attorney is required along with declaration of intent of use, with the fees to be paid within the 6 –month period following the protection expiry.