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FAQ

TRADEMARKS

 

What is a trademark?

Mexican law acknowledges as trademarks only distinctive visible signs.

A word, a combination of letters and numbers, a logo, a combination of logo and words and/or numbers and three-dimensional shapes of packages, bottles, even products, would be regarded as trademarks, thus may be registered.

Non-traditional trademarks such as sounds, musical and olfactory marks are not considered trademarks, thus they may not be registered.

What is the Mexican Institute of Industrial Property?

The Mexican Institute of Industrial Property is the Mexican Patent and Trademark Office (MPTO).

How is a trademark protected?

The only way to obtain exclusivity rights on a trademark in Mexico is registering it with the MPTO.

Does Mexico acknowledge common law rights?

No. Mexico is a civil law, first-to-file, country. Common law does not exist in Mexico. Nevertheless, Mexico will provide some limited actions and defenses to users of non-registered trademarks.

Is Mexico a party of the Madrid system?

Yes. Starting February 2013 Mexico started accepting international registrations.

Would Mexico acknowledge rights arising from a foreign trademark registration, particularly from a NAFTA country?

No. Foreign trademark registrations do not provide rights in Mexico at all.

Why would it be important to register or renew a trademark in Mexico?

Obtaining or keeping the Mexican trademark registration is important, because it is the only way of getting or preserving the exclusivity rights on the trademark.

Using a non-registered trademark is not illegal, but the user is not acknowledged as owner of the mark, thus its options to oppose imitators are extremely limited. In the worst scenario, a third party may register a trademark identical or confusingly similar to the used one, for the same or similar products or services, and then file legal actions against the earlier user of the mark. Although the senior user would have some defenses available, its position would be seriously compromised.

Does Mexico demand use to issue a registration?

No. The trademark registration may be issued without proving use in Mexico. The trademark owner has three years to start using the registered trademark. If the trademark owner has not started using the mark after the third anniversary of the registration, the trademark becomes vulnerable to cancellation due lack of use.

How long does a trademark application take to become a registration?

It is variable, and it depends on the circumstances of each case, although the applicant can control some of them, either to expedite or delay the proceeding.

If the application is filed with all the formal documents, and there are no objections concerning the list of products or goods, the distinctiveness of the trademark or the existence of anticipations, the trademark applications takes, in average, six months to be approved.

What is the term of a Mexican trademark registration?

Mexican trademark registrations are valid for a ten years term, counted from the application date in Mexico. The trademark may be renewed an unlimited number of times for ten years terms, provided that the use of the trademark has not been interrupted for three consecutive years or more.

Are multiple-class applications allowed in Mexico?

No. Mexican law does not accept multiple-class trademark applications. The applicant must file one application per class.

Is it necessary to prove use of the trademark every three years in Mexico?

No. Since 1991, it is not necessary to file evidence of use every three years to keep a trademark registration alive.

Actually, filing evidence of use would only be useful to discourage third parties from challenging a trademark registration on grounds of lack of use, if the right evidence is filed. Filing a simple statement of use is a waste of time and money.

We do not encourage trademark owners to spontaneously filing evidence of use from time to time as a systematic practice, because the benefits of such a practice are virtually impossible to measure in most cases.

The voluntary filing of proof of use of the trademark may be helpful if there is an actual concern that a third party may attempt to cancel the registration on grounds of lack of use; however, even in such a case, the trademark owner must be fully aware that the benefits of the unilateral and voluntary filing of proof of use would be limited to a dissuasive effect, in the best scenario. If the third party files a cancellation action on grounds of lack of use, the trademark owner would have to prove that the use of the mark has not been interrupted, regardless any statement or evidence of use previously filed.

Is it possible to increase the list of products or services covered by a trademark application or registration?

No. If the trademark owner or applicant needs to broad the original coverage of the trademark registration/application, it must file a fresh application.

In the case of design trademarks, is it possible to update or amend the original design?

No. Mexican law does not allow amendments to the registered trademark as originally filed.

It does not mean that the trademark owner may not amend the design it actually uses. However, if there is a material amendment, the use of the amended design would not be regarded as use of the registered trademark, and the registration may eventually become vulnerable to cancellation due lack of use.

Does the earlier use in Mexico or abroad of a trademark provide any sort of priority to obtain the registration?

No. Mexico is a first-to-file country, thus the first applicant gets priority over the first user.

Nevertheless, the earlier and continuous use of the trademark in Mexico or abroad provides the user with an action to cancel a trademark registration identical or confusingly similar to the used one for the same or similar products, provided that such earlier use started before the filing date in Mexico or date of first use stated in the Mexican trademark application, if any.

Further, a Mexican trademark registration is not enforceable against a third party that started using, in Mexico, an identical or confusingly similar mark to the registered one, before the filing date or date of first use of the registered trademark, for the same or similar services, provided that such use is continuous.

The validity in Mexico of the assignment of non-registered trademarks, and the consequential transfer of the above explained action and defense to the assignee, is a source of continuous debate. So far, the MPTO has ruled against the recognition of such assignments.

Is recordation of trademark licenses compulsory in Mexico?

No. Licenses are fully valid and binding between the parties, even in the absence of recordation. Recordation of the license with the MPTO is not a requirement for the deduction of royalties either.

The statute provides that the use of the trademark by the licensee inures in the benefit of the trademark owner, only if the license is recorded. However, in the last several years, the MPTO and the Federal Court of Tax and Administrative Affairs (FCTAA) have considered that the use by non-recorded licensees also inures in the benefit of the trademark registration. However, given that the statute provides otherwise, we suggest staying on the safe side by recording the license with the MPTO.

Recordation of the license is also required to make the agreement enforceable against third parties (i.e. assignees of the trademark) and to vest the licensee with the right of filing trademark infringement actions; if the license were silent regarding this issue, the licensee is authorized by act of the law to file infringement actions, thus the parties must be careful when drafting a license valid for Mexico.

Licenses become of public record when recorded with the MPTO. If the license states confidential or sensitive information that should not be disclosed, the statute allows the parties to execute and file a summary of the license. In any case, the parties must be careful when drafting the summary, in order to avoid having two conflicting agreements.

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