Mexican trademark system

United Mexican States(hereinafter referred to as "Mexico") The following information is useful when protecting trademark rights.

We hope that this page will be of assistance to you in protecting your intellectual property overseas. Please feel free to use this information.

<Average review period>
Currently, the examination period from application to registration is approximately 6 months to 1 year unless there is a notice of reasons for refusal.

Trademark rights in Mexico

About the trademark system

(1) Definition of trademark

In Mexico, a trademark is defined as a sign that is perceivable by the senses, has a clear and precise object of protection, and is distinguishable from other goods/services of the same kind or category on the market. Article 171).

Previously, it was limited to "things that can be seen," but the law was revised to "things that can be perceived by the senses."
As a result, trademarks that cannot be recognized visually, such as sounds or smells, can now be protected.

(2) Types of trademarks that can be protected

In addition, the following items can be registered:

(3) Trademarks that cannot be registered

The following cannot be registered as trademarks.

• Items similar to the prior trademark
• Lack of/low discernment
  common name, customary name
  Single letters, numbers, colors, etc.
• Other Information
  Fraudulently applied signs
  Coat of arms of the country, local government, international organization, etc.
  Names of artistic or literary works, imitations of works, etc.

From application to registration

(1) Term of existence

• 10 years from the date of registration.
  *For applications filed before November 2020, 11, the period is 4 years from the filing date.
• Can be renewed every 10 years
  →Renewal procedures are possible from 6 months before to 6 months after the expiration date. Unlike the Japanese trademark system, no additional office fees will be incurred if procedures are carried out after the expiry date.
  →In order to renew, the trademark must be used in Mexico (see “(8) Declaration of use” below).

(2) Application system

• 1 trademark 1 classification system
  →Since applications specifying multiple categories are not allowed, it is necessary to apply for a trademark one category at a time.

(3) From application to examination

a) Regarding trademark applications

1. Information required for application
   ・Applicant's name/name, nationality, address 
   - Trademark name and color trademark sample, or if it is a three-dimensional trademark, that fact.
   ・Description of goods/services (according to Nice International Classification)
   ・Date of first use of the trademark in Mexico (cannot be corrected later) or statement that it is unused
   · power of attorney
   ・Basic application information (if priority is claimed)
   
   *Application documents must be written in Spanish or a Spanish translation must be submitted.
2. Early examination system
   There is no accelerated examination system like in Japan.
3. Information provision system
   There is no system in place to accept information provided by third parties regarding applications.
   However, the opposition period is effectively set before the examination.

b) Publication of application/objection

Until now, Mexico was one of the few countries in the world without an opposition system, but the revised law introduced a new opposition system on August 2016, 8.
After receiving the application, it will be published in the official gazette within 10 business days.

The opposition period is within one month from the day following the publication of the application. Anyone can object.

c) Examination

• Screening will be conducted in the order in which applications are received.
• First, a formality check will be conducted.
  During the formalities examination, the classification of designated goods/services is examined, and if it is determined that the classification or description is inappropriate, an amendment order will be issued.
• After formalities examination, substantive examination (absolute reasons for refusal and relative reasons for refusal) will be conducted.
• Notice of reasons for refusal
  Response period: within 2 months
  You will be notified in electronic data format.
  We will submit written opinions, amendments, evidence, consent forms, etc. as necessary, and respond to counterarguments, amendments, etc.
  It is possible to submit a coexistence agreement to resolve the reason for refusal due to a prior trademark.

(4) Trademark registration

Once the opposition period has passed without any opposition being filed and the trademark is approved in substantive examination, or the application that has been opposed is approved, the Mexican Institute of Industrial Property (IMPI) will register the trademark and send a certificate of registration to the applicant. Masu.
If the trademark application is registered straight without any notification of reasons for refusal, a registration certificate will be issued approximately 6 months to 1 year from the filing date.

(5) Appeal against decision of refusal

If the applicant is dissatisfied with the decision of refusal, the applicant can file an appeal against the decision of refusal with either IMPI or the court.

(6) Oath of use

Due to the revision of the law, it is now mandatory to take the oath of use during the following period. However, proof of use is not required.
If you do not declare use, your registration will automatically expire.
Specified goods and services that are not in use are excluded from protection.

[Required time to submit declaration of use]

　Domestic registration
　・Within 3 months after 3 years from the registration date
　・When updating

　international registration(Registration via Madpro)
　・Within 3 months after 3 years from the date of registration in Mexico
　・Within 3 months from the date IMPI was notified of the renewal of the international registration
*However, if the date of registration in Mexico is less than three years from the date of renewal of the international registration, it is not necessary to submit an oath of use at the time of renewal.

[Affidavit of Use Any time]
　・You can voluntarily submit an affidavit of use at any time.
　- Since the submitted declaration of use is made public, it serves as a check on third parties and has the advantage of preventing unnecessary non-use cancellation requests.
　To effectively avoid a non-use revocation judgment, it is recommended that an affidavit of use be filed every three years in which a vehicle is considered non-use.

(7) Trial for cancellation of non-use

If a trademark has not been continuously used in connection with designated goods/services for three years or more, a third party may request a cancellation trial based on the non-use of the trademark.
These three years refer to the three years preceding the date on which the third party requested a non-use revocation trial. The respondent must testify under oath regarding the use during this time.

(8) Invalidity suit

If a trademark registration has grounds for invalidation as stipulated in Article 258 of the Industrial Property Law (misappropriated application, etc.), a request for invalidation of the trademark right can be filed. Please note that the period during which you can make a claim differs depending on the reason for invalidation.
On the other hand, it appears that IMPI voluntarily discovers misappropriated applications and refuses registration.

(9) Cancellation of trademark rights ex officio

Mexican trademark law provides that trademark registrations can be canceled ex officio for administrative purposes.
However, in practice, it is extremely rare for a cancellation decision to be made ex officio.

(10) Waiver of trademark rights

Trademark owners can voluntarily cancel their registrations by submitting an application for abandonment of trademark rights to IMPI.

(11) Trademark license

If you have concluded a license agreement (regular usage rights, etc.), you must register the license with IMPI.
In Mexico, a licensee's use is not recognized as valid unless the license agreement is registered with IMPI.

treaty

　The status of membership in the main treaties is as follows.