Mexico is a first-to-file country. Ownership on a trademark may only be obtained by registering the mark with the Mexican Patent and Trademark Office (MPTO). There is no common law in Mexico.

Trademark applicants must be careful when filing trademark applications. Otherwise, the resulting trademark registration may be either too restrictive, too vague or in the worst-case scenario, completely useless to provide an effective trademark protection.

The following are a few tips for trademark applicants in Mexico:

What trademark should apply for?

a) First, the applicant must register those trademarks that are already being used in Mexico.

b) Second, the applicant should register those trademarks that are not yet being used in Mexico, but it plans to start using them in the short or medium terms. It is not necessary to prove use of the trademarks to obtain the registration and the trademark owner would have three years to start using them in Mexico before they become vulnerable to cancellation due non-use.

(Update May 19, 2018: An important amendment to procedural and substantive trademark-related provisions was enacted on May 18, 2018. For Mexican registrations issued on August 10, 2018, it would be compulsory to file a declaration of use within a three-month term after the third anniversary of the trademark registraton. Failure to file the statement of use would result in the automatic cancellation of the registration. For more information, read our post).

c) Third, the applicant may register trademarks that are not being used and there are no plans to use them, but it wants to block them for use or registration by third parties. If after the third anniversary of the registration the trademark owner maintains the interest in blocking the trademark, it may get around the vulnerability to cancellation due non-use by re-filing the application and obtaining a new registration.

What version of the trademark should be registered?

Most trademark applicants will have two or three options to register the trademark: (i) in standard block characters; (ii) characters with a design; (iii) a design without alphanumeric characters.

Mexican law provides that registered trademarks should be used as registered, or with minimum changes, provided that they do not affect the distinctiveness of the trademark.

With a few exceptions, the stylization of trademarks tends to change with time. Although a word+design trademark registration would give proprietary rights on the mark and the design, the trademark owner has to use the trademark as registered or with non-material changes. A significant variation in the used stylization or design may cause the registration to eventually become vulnerable to a cancellation action due lack of valid use of the registered trademark.

Sometimes trademark owners find that because the evolution of the designs, the existing registrations are not any longer useful, and they have to file new trademark applications in order to guarantee an adequate protection, although giving up the filing date of the “obsolete” registrations; in a first-to-file system, giving up a filing date has some undesirable consequences in connection to the vulnerability of the trademark registration against different causes of cancellation, such as earlier use in the particular case of Mexico.

On the other hand, if the trademark is registered in standard block characters, the use of the mark in any letter style, size or color would be considered as valid use of the registered trademark for maintenance purposes. Therefore, the proprietary rights on the trademark will remain unaffected by the changes of the stylization of the mark.

Concerning design trademarks, most trademark practitioners agree that a design registration in black and white would provide a broader and more flexible protection than if claiming colors. The general opinion is that a design registered in black and white allows the registrant to use the mark in any color combination, although it is important to remark that said opinion is not expressly supported by the statute or some judicial precedent.

Therefore, in an ideal scenario, the applicant should file applications for both the stylized and the standard character trademark. If the trademark involves a logo in colors, filing the applications with and without color claim would also be advisable.

Unfortunately, budget limitations often prevent trademark owners from ideal scenarios, and force them to make choices. Although each case is different and require a specific analysis, in most cases I would recommend filing the application for the mark in standard block letters. However, if the logo and/or stylization is highly distinctive and there is a high commitment to use the trademark without changes in the colors and fonts, the application should be filed for a word+design trademark claiming the colors. An intermediate solution would be filing the application for the word+design trademark in black and white.

Who should file the trademark application?

There are many reasons and situations that may impact the decision about who should be the trademark owner, such as corporate policies and tax advantages.

If we limit the perspective to the Mexican trademark law, there are two issues that demand special attention as for who should be the applicant:

a) Claim of use. Mexican law allows trademark applicants to claim the use in Mexico earlier than the filing date in our country. If the trademark registration is issued, the use claim would give the trademark owner some additional advantages in case of a dispute with third parties if compared to a registrant that did not claim earlier use.

Notwithstanding the above, claiming use may be tricky. The applicant is not allowed to claim in its benefit the earlier use in Mexico performed by a parent or sister company or a subsidiary. Although the use claim gives some advantages to the registrant, it also may allow third parties to challenge the validity of the trademark registration claiming that the date of commencement of use stated in the application is false. The burden of proof on such cases would be on the trademark owner, who would have to demonstrate that the stated date of first use is true.

(Update May 19, 2018: A binding decision from the Federal Courts of Appeals ruled that the burden of proof to prove that a date of first use stated in a Mexican Trademark Applicaton is false is on the plantiff. This ruling makes claiming a date of first use in Mexico much safer. For more information, please read our post).

b) Licensing. Lack of use of a registered trademark by the trademark owner for three consecutive years (after the registration) on at least one of the goods/services described in the registration would make the trademark vulnerable to cancellation due lack of use.

Although license agreements are fully valid and enforceable between the parties without any special formality, the use of the mark by a licensee would inure in the benefit of the trademark owner only if a written license is recorded with the MPTO; sister companies and subsidiaries would be considered licensees too for these purposes. There have been several decisions from the MPTO and the Federal Court of Tax and Administrative Affairs (FCTAA) that flexibly such a formalistic statutory requirement, there are no binding decisions yet.

Therefore, if the application is filed by an individual or entity that would use the trademark through a licensee or franchisee, it should take into account that it will have to eventually record a written license with the MPTO.

In which International Class should apply?

Mexico does not allow multiple-class applications. The applicant must file one application per International Class, according to the Ninth Edition of the Nice Classification.

This is an issue trademark applicants must be very careful about. If the examiner considers that the application includes goods/services of more than one International Class, she/he will demand the applicant to delete some of the goods/services from the application. If the applicant is interested in securing trademark rights on the deleted products or services, they would have to be included in a new application that would not have any sort of preference or priority arising from the original trademark application.

There are three considerations that may help to decide in which class(es) the trademark application should be filed in:

a) First, the trademark application must be filed for those goods or services where the trademark is already being used.

b) Second, the trademark application should be filed for those goods or services where the trademarks is not yet in use but there are plans to use it in the short of middle term.

c) Third, the trademark application may be filed for goods or services where there are no plans to use it, but the applicant wants to block third parties from using or registering the trademark in such services or products. As we stated before, the trademark registration would become vulnerable to cancellation due lack of use only after the third year after the registration of the mark. If it is a strategic mark, the registrant may re-file the application after the third year and obtain a new registration.

Although Mexican law does not allow “full-class coverage”, the current practice of the MPTO allows applicants to use the header of the international classes in the description, obtaining a virtually full-class coverage. (Update May 19, 2018: The overhaul of the Mexican tradenark system enacted on May 18, 2018, provides that the header of the Class may no longer be used as description of goods and services. Such a restriction will become effective on August 10, 2018. For more information, read our post). So far, such broad protection is not limited to the products or services generically stated in the class headers, but also include products or services than may hardly be considered as implicitly included in the class header, such as “retail services” in the case of the class 35. (Update May 25, 2013: The New Guildelines of the Construction of the Classification, in force since October 4, 2012, provide a restreictive construction of the Classification, thus goods or services do not explicitly stated in the application or identified by genre of the lits of products or services stated in the application or registration are no longer considered covered by the application or registration. Read the post).

If the applicant seeks the broadest possible protection, it may combine a specific description with the class header (The header of the Class may not be used. See above update of May 19, 2018); the use of the mark in only one of the stated services or products would be enough to maintain he registration.

Of course, the broadest the products/services description is, the higher the chances of entering into conflicts with third parties.