Trademarks FAQ

A trademark is a sign perceptible by the senses that allows distinguishing a good or service from others in the market. Mexican law acknowledges visible signs (including holographic figures), sounds, smells and trade-dress as trademarks, and may be registered.

Mexico also provides specific protection for tradenames, certification marks, collective marks, commercial slogans to be used in advertising, appeals of original and indications of origin.

The official name of the Mexican Patent and Trademark Office (MPTO) is Instituto Mexicano de la Propiedad Industrial (better known as IMPI) or Institute of Industrial Property.

Mexico is a first-to-file country. The only way to obtain exclusivity rights on a trademark in Mexico is registering it with the MPTO. This principle applies to all distinctive signs, with the exception of tradenames.

Common law does not exist in Mexico. Nevertheless, Mexico will provide some limited actions and defenses to users of non-registered trademarks against unfair competition.

Yes. Starting February 2013 Mexico started accepting international registrations according to the Madrid Protocol.

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

Obtaining or keeping the Mexican trademark registration is important, because it is the only way of getting or preserving the exclusivity rights on the mark. 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-case scenario, a third party may register a trademark identical or confusingly similar to the one that has being used, for the same or similar products or services, and then file legal actions against such earlier user. Although the senior user would have some defenses available and actions to invalidate the trademark registration, its position would be seriously compromised.

No. The trademark registration may be issued without proving use in Mexico. The trademark owner has three years to start using the registered trademark.
A statement of actual and effective use is due after the third anniversary of the issuance of the trademark registration. If the statement of use is not filed within a three-month term after the third year of issuance, the registration is cancelled.
This burden is mandatory also for registrants using the Madrid Arrangement.

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 examination.

If there are no objections concerning the list of products or goods, oppositions or refusals related to the distinctiveness of the trademark, a statutory prohibition or the existence of anticipations, the trademark applications take, in average, six months to be approved.

Under the new Federal Law for the Protection of Industrial Property enacted in 2020, a trademark registration is valid for a ten-year term, counted from the date of registration in Mexico.

The trademark may be renewed an unlimited number of times for ten years terms, provided that the owner filed a declaration of actual and effective use.

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

It depends. For trademark registrations issued before August 10, 2018, it is not necessary to file evidence of use every three years to keep a trademark registration alive. In the case of trademark registrations issued on August 10, 2018, and thereafter, it is necessary to file a statement of actual and effective use after the third anniversary of issuance of the registration.

The term to file such a statement of use is three months after the registration becomes three years old. Failure to file the statement of use would result in the ipso iure cancellation of the trademark registration. A statement of actual and effective use is required for all registered trademarks simultaneously with the renewal application.

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.

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

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 Administrative Affairs (FCAA) have considered that the use by non-recorded licensees also inures in the benefit of the trademark registration. USMCA stipulates that recordation of the license is not required to make the agreement enforceable against third parties and to vest the licensee with the right of filing trademark infringement actions; if the license were silent regarding filing of trademark infringement actions, 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 parties want to record the license and it 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.