Globalization has taught businesspeople many things, including the importance of protecting their intellectual property in the markets in which they operate (or are planning to operate). For brand owners, intellectual property of course includes trademarks, and over the past few decades many companies have learned to their dismay that their trademarks have been registered in overseas markets by third parties that are using the trademarks themselves or simply squatting on them, waiting for the global trademark holder to make them an offer.
In Trademark Protection In The Global Marketplace: Because the World Does Not End at the U.S. Border we outlined our advice to international companies seeking to cost-effectively protect their trademarks.
For all but the largest companies, filing individual trademark registrations in the world’s 200+ countries is unaffordable and impractical, but over the past 25 years two important developments have made that unnecessary.
In 1996, the European “Community Trade Mark” (the “CTM”), came into being and allowed trademark owners to secure protection in all 27 European Union member countries via a single trademark application. And in 2012, Mexico acceded to an international treaty called the Madrid Protocol. Under this treaty, if you own a trademark registration in your “home country”, you can apply for an “International Registration” and designate, in a single application, from one to 121 countries that have also joined the Madrid Protocol. Madrid Protocol members conduct more than 80% of the world’s trade.
Should you file directly in Mexico or via WIPO (the Madrid Protocol)?
Given the global support for trademark owners outlined above, should you worry about local trademark registrations at all? Or simply file via WIPO and let that process (which secures local trademark registrations) handle local protection?
It truly depends, and thus you should get professional counsel to help you determine the best course of action for you. This is especially true for overseas trademark registrations, given that national trademark offices still retain jurisdiction and thus discretion to decide whether to grant a trademark registration, even if you file via the Madrid Protocol.
The following are a few of the questions our international trademark lawyers typically consider in deciding whether to file directly in Mexico or via the Madrid Protocol:
1. What is the country of the original trademark registration?
2. In how many (and which) countries do you expect to file trademark applications?
3. For what type(s) of goods/services are you applying for trademark protection?
This post covers the basic concepts for trademark application in Mexico, but the above comments are valid for every country.
A consultation with an international IP lawyer is valuable not only to ensure that you understand local country trademark laws and regulations, but also because the application of laws and regulations often change over time. For instance, it used to be that a Madrid Protocol application that designated China would proceed to registration more quickly than an application in China, but now the reverse is true and direct registration generally secures a quicker and sometimes even a better result. See Register Your China Trademarks in China not Madrid. As for Mexico, it does not allow multi-class filings and so an International Registration covering more than one class will be split automatically into separate Mexican applications (one per class).
As a general rule, if you’re filing in three or more countries, it is usually cheaper to file via the Madrid Protocol. But if you’re filing in (only) one or two countries initially, it will almost always be cheaper to file directly in those one or two countries. Plus, it’s important to remember that an International Registration application designating Mexico will ultimately be approved (or denied) by the Mexican authorities. If Mexico is your destination, the big advantage to filing directly is that you will be able to get the professional analysis geared to give your application the best chance of success in Mexico.
In Mexico, trademark registrations are for ten years, with the possibility of subsequent renewals for 10 additional years. In a recent revision to the law, the 10-year period is counted from the date your Mexican trademark registration is granted, rather than from the date of your trademark application.
The Mexican Patent and Trademark Office (Mexican Institute for the Protection of Industrial Property, or IMPI in Spanish) is the Mexican government agency in charge of granting (or denying) trademark registrations. Trademark registrations may be applied for by any individual or company wanting to distinguish its products or services and can be granted to any mark that can be perceived by the senses. This of course includes brand and product names and logos, but it also includes non-traditional marks as well, such as sounds, scents, motions, colors, and product designs or configurations. Protection for certification marks is also available in Mexico.
As in every country, a good starting point for a Mexican trademark registration is to search for marks similar to those you would like to register and which have already been registered or are in the process of being registered by other parties in Mexico. The IMPI “MARCia” trademark website is free to access and can provide a decent overview of the trademark landscape in your industry. But note that the results from this site are not definitive because it is not completely up to date.
Mexico follows the International Classification of Goods and Services under the 11th edition of the Nice Agreement. However, it is important to provide a careful and accurate description of the goods and services for which you are seeking a Mexican trademark because Mexico’s trademark examiners are disinclined to grant registrations for goods or services not expressly described in the filing. Ownership of a foreign trademark registration does not grant applicants any priority for a Mexican trademark beyond that provided by the Paris Convention.
What documentation will you need to apply for a Mexico Trademark?
Mexico’s trademark registration process is relatively simple. You need to fill out the trademark application form, which can be done electronically with a Payment and Electronic Services Portal (PASE) account granted by the Mexican government for online filing. Anyone holding a Personal Identification Code (CURP) may sign an electronic application.
The information required in the trademark registration form includes the following:
- The word or phrase to be registered as a Mexican trademark and a black and white or color specimen of the mark in the case of designed or combined marks; if applying to register sounds, scents or product configurations, a description of the mark to be protected should be provided.
- The products or services to be covered by the Mexican trademark.
- The date of the first use of the trademark in Mexico. If no first use is claimed and specified, the Mexican Patent and Trademark Office will assume the mark has not been used.
- The applicant’s residential or business address. This need not be in Mexico.
- The factory address or location of the main commercial establishment (street, number, city and country) if (and only if) the applicant claims a date of first use in Mexico.
- A power of attorney executed by an authorized officer of the applicant company and by two witnesses.
For applications coming from an international registration, the Mexican Patent and Trademark Office has up to 18 months to issue its first decision or letter and they have of late sometimes been taking nearly this long. Mexican trademark registrations come into effect once the certificate is issued and the registration has been published in the Industrial Property Gazette.
If the Mexican trademark examiners issue an objection to the registration, applicants have two-months from the date on which they are served with the official action (with the possibility of a two-month extension) to respond to any objection and to respond to any opposition filed. Examiners have an additional six months from the time of the response to issue a decision.
Once a Mexican trademark is granted
Mexican law does not expressly provide the time in which use of a mark must begin. If a mark is already in use, that (and the date of first use) must be expressly stated in the application, or the Mexican trademark office will deem it not to have been used. If a mark was not in use prior to the granting of a Mexican trademark, registrants must file a declaration of use within the three-month period following the third anniversary of the registration. A declaration of use must also be filed upon the renewal of a registration. If these declarations of use are not filed, the registrations automatically lapse.
The regulations governing declarations of use are a recent addition to the law and they are aimed at cleansing Mexico’s trademark registry of unused trademarks, especially those held by trademark squatters. Though this is a good thing for most trademark applicants, it is important to note that applicants generally should intend to use the goods or services within three years of their registration in Mexico or they probably should not bother to apply for the trademark at all.
In Mexico, marking is mandatory to enable enforcement of claims against trademark infringers. The symbol ®, the letters MR or the term Marca Registrada (registered trademark) are allowed. The use of the term ™ is not recognized as the adoption of a mark. If marking has not been made, Mexican law nonetheless permits trademark owners to pursue trademark infringement claims if they have publicly announced that the mark is registered by, for example, placing an advertisement in a newspaper.
What if a Mexican trademark application is denied and what if someone has already registered by brand as a Mexican trademark?
If IMPI denies your trademark registration, you can challenge that decision by filing an administrative motion with IMPI or via a nullity action before Mexico’s Federal Court of Administrative Justice, which has a specialized chamber for intellectual property matters.
If your desired trademarks are well-known in other markets, Mexican law may provide protection, provided you can prove that your marks are known by Mexican consumers or widely recognized globally. This protection means that IMPI as a matter of course should reject third-party trademark applications for well-known brands, but most brand owners register their “famous” trademarks as a precautionary measure because the cost of registering a Mexican trademark pales in comparison to the cost of a lawsuit where you have to prove that you never needed to file a trademark because it was for a well-known brand.
If a trademark is not likely to be known by Mexican consumers or recognized globally, but nonetheless has already been registered, by a “squatter” who hopes to extract a “ransom” from a foreign trademark user, or a domestic goods or service provider who is infringing on the trademark rights of a well-known brand, it is possible to expunge the trademark registration by lodging a cancellation action, on the following grounds:
- The trademark registration was improperly granted.
- A third-party claim to the mark derives from prior use in connection with the same or similar goods.
- The registrant’s claim of domestic first use in its application form is inaccurate.
- The registration was obtained in bad faith.
Protecting your trademarks is important so don’t wait
Because trademarks are so often a company’s most important assets, there are many people who register the brand names and logos of foreign companies in Mexico (and elsewhere) and then seek to sell the trademark “back” to the foreign company. The trademark prices in these transactions are invariably way more than it would have cost the foreign company to have secured the trademark by applying for it as described above.
If you are going to be doing business in Mexico, one of the first things you should do is retain a lawyer with Mexico trademark experience to help you figure out the best way to protect your brand names and your logos (and maybe even your sounds and colors, etc.) in Mexico.