The Global/Mexico Trademark Landscape
In a world where trademark identity is often a company’s most valuable asset, protecting that identity in foreign markets is crucial. Mexico, with its growing economy and strategic geographic location, has become a hotspot for many international companies. However, without a solid understanding of its trademark regulations, companies run the risk of compromising their brand integrity and facing potential legal disputes. This article discusses the Federal Law for the Protection of Industrial Property (2021) in Mexico and explains how companies can safeguard their intellectual property rights in Mexico.
Navigating International Trademark Protocols
For trademark owners, trademarks are an essential aspect of intellectual property. If you plan to do business in Mexico, your attorney should have experience with trademarks in Mexico to ensure protection of the elements of your brand.
For all but the largest companies, filing individual trademark registrations in the more than 200 countries of the world is costly and impractical. However, in the last 25 years, two important developments have made this unnecessary.
In 1996, the European Union Community Trademark, currently known as the EU Trademark (EUTM), was established. This initiative allows a single application for registration to obtain trademark protection in all member states of the European Union. This system is possible because the EU operates as a supranational entity with regulatory capacity over its member countries. One of the fundamental objectives of the EU is to homogenize legislation and provide protection for citizens’ rights in a cross-border context, including intellectual property rights.
It is important to note that the EU has implemented this measure to simplify and strengthen the trademark protection process within its territory, thus facilitating business management and promoting innovation and trade.
Although trademark protection is predominantly applied within a national framework outside the European Union, i.e., each trademark is legally protected only within the borders of the country where it is registered, there are international collaboration strategies that go beyond this limit. One of the most important is the Madrid System, administered by the World Intellectual Property Organization (WIPO), a United Nations entity specialized in the protection of intellectual property rights at the international level. This system enables trademark owners to register and manage the protection of their trademarks in several countries simultaneously through a streamlined and centralized process. It is crucial to understand that the Madrid System provides an efficient framework for companies to protect their intellectual assets in multiple jurisdictions, minimizing the legal complexity and reducing the costs associated with protecting trademarks abroad, yet it is more like a priority system (priority claim) than an international registration.
Therefore, companies or individuals wishing to secure their trademarks in different international jurisdictions must proceed with the necessary registrations in each country of interest. This process can be complex and requires a detailed understanding of the applicable intellectual property laws in each territory.
Should You File Directly in Mexico or via WIPO (Madrid Protocol)?
WIPO stands for World Intellectual Property Organization, which oversees several international treaties related to intellectual property rights, including the Madrid Protocol. Given the global support for trademark owners mentioned above, should I worry about local trademark registrations or just file through WIPO and let that process (which ensures local trademark registrations) take care of local protection?
The Madrid System provides a single application mechanism, which notifies the competent bodies and authorities of each of the designated countries of the existence of such an application. This establishes that they must recognize the original filing date as valid for the right of priority or priority. However, it is essential to understand that this recognition does not exempt the request from:
- Complying with country-specific legal regulations to determine whether a sign is registrable or not, both in Mexico and in other countries.
- Following the trademark registration process in accordance with the formalities and stages dictated by the legislation of each country, to mention just two of the most relevant aspects.
It is therefore crucial to understand that the scope of the Madrid System includes an international phase, managed by WIPO, which acts as a two-way intermediary between the applicant and the national authority, and a national phase, which falls under the jurisdiction of each of the authorities of the designated countries. This national phase is subject to national regulations, both in form and substance.
This clarification is vital to avoid misunderstandings or incorrect expectations about the rights granted. The Madrid System should not be confused with the EU Community Trademark, which offers a unitary registration system within the European Union, reflecting a level of legal integration and homogenization that is not replicated within the scope of the Madrid System.
The following are some of the questions our international trademark attorneys often consider when deciding whether to file directly in Mexico or through the Madrid Protocol:
- What is the country of the original trademark registration?
- In how many (and which) countries do you plan to file trademark applications?
- For what type(s) of goods/services are you seeking trademark protection?
This article covers the basics of trademark filing in Mexico, but the above comments are valid for all countries.
A consultation with an international IP attorney is valuable not only to ensure that you understand the local trademark laws and regulations in the country, but also because the application of the laws and regulations often changes over time. For example, it used to be that a Madrid Protocol application designating China would move toward registration more quickly than an application in China, but now the opposite is true and direct registration generally ensures a faster and sometimes even better result. As for Mexico, it does not allow multiple class filings, so an International Registration covering more than one class will automatically be divided into separate Mexican applications (one per class).
If you are filing in three or more countries, it is usually cheaper to file through the Madrid Protocol. But if you are filing in (only) one or two countries initially, it will almost always be more economical to file directly in those one or two countries. Also, it is 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 great advantage of filing directly is that you will be able to obtain the professional analysis oriented to give your application the best chance of success in Mexico and in addition to that, shorter deadlines in the registration process, since the notifications issued by the national authority in Mexico are sent to WIPO and WIPO must in turn communicate – officially notify – the applicant, it is possible that there may be time lapses between these actions – which are usually only a few days – and delays in the progress of the proceedings.
The Trademark Landscape in Mexico
In Mexico, trademark registration is valid for ten years, with the option to renew for additional periods of one decade each. Following a recent legislative reform, the decade count starts from the date on which the Mexican trademark registration is granted, not from the date of application. With the publication of the amendment to the Industrial Property Law on November 5, 2020, which aligns with the provisions of the TMEC, the mandatory filing of a declaration of trademark use was introduced. This requirement applies to all trademarks registered in Mexico and constitutes an essential element to preserve the validity of the registration for trademarks granted from August 10, 2018, onwards.
The Mexican Patent and Trademark Office, known as the Mexican Institute of Industrial Property (IMPI), is the governmental entity in charge of granting (or refusing) trademark registrations. Any person or company seeking to differentiate its products or services may apply for these registrations. Trademarks eligible for registration can be perceived by the senses, including, but not limited to, trade names, products, logos, sound and even olfactory marks, in addition to three-dimensional marks. In Mexico, protection is also offered for certification marks, famous and notorious marks, but that will be the subject of another article.
To initiate the registration of a trademark in Mexico, it is advisable to perform a prior search for trademarks that may be similar and that are already registered or being processed by third parties in the country. Although IMPI’s “MARCia” website offers free access and provides an overview of the trademark environment in your sector, it is important to keep in mind that the results obtained may not be definitive, as the database is not always fully updated.
In the registration process, it is essential to present a detailed and precise description of the goods and services that are intended to be covered by the trademark, since IMPI grants protection only for those that are explicitly mentioned in the application. Mexico adopts the International Classification of Goods and Services of the 12th edition of the Nice Agreement for this purpose.
In addition, it is crucial to understand that ownership of a trademark registration abroad does not, by itself, confer any right of priority for the registration of the same trademark in Mexico. Applicants may avail themselves of the six-month grace period offered by the Paris Convention, counted from the date of the first application in another member country, to claim priority in Mexico (recognition of the same date of filing of the application in a member country of the Convention as the filing date in Mexico).
Trademark Documentation in Mexico
The process of registering trademarks in Mexico is relatively simple. You must complete the trademark application form, which can be done electronically with a Portal de Pago y Servicios Electrónicos (PASE) account granted by the Mexican government for online filing. Anyone in possession of a Unique Population Registry Code (CURP) can sign an electronic application. CURP stands for Clave Única de Registro de Población and is a unique identification code assigned to each Mexican citizen and resident. It is similar to a Social Security number in the United States. Although the PASE platform proves to be an intuitive and user-friendly system, it is crucial to obtain advice from an intellectual property specialist. The apparent simplicity of the trademark registration process in Mexico can lead to a misleading perception, as the platform allows data entry without validating its correctness, which alone does not guarantee a successful registration. Therefore, it is essential to have a thorough knowledge of the specific Mexican trademark laws to ensure compliance with all legal and technical requirements.
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, smells or product configurations, a description of the mark to be protected must be provided.
- The goods or services to be covered by the Mexican trademark.
- The date of first use of the mark in Mexico. If no first use is claimed or specified, the Mexican Patent and Trademark Office will assume that the mark has not been used.
- The residential or business address of the applicant. This does not need to be in Mexico.
- The factory address or location of the principal place of business (street, number, city and country) only if the applicant claims a date of first use in Mexico.
- A power of attorney granted by an authorized officer of the applicant company and two witnesses.
IMPI has up to 18 months to issue a first decision with respect to international trademark applications, as established by the international registration procedure through the Madrid System. This period starts from the time the International Bureau (WIPO) sends the application to IMPI. After WIPO receives and reviews the international application to verify that it complies with the formal requirements, it records it in the International Register and publishes it in the International Trademark Gazette, notifying each of the designated contracting parties. In Mexico, the IMPI then proceeds to analyze the application according to the national industrial property legislation.
As of November 5, 2020, the Federal Law for the Protection of Industrial Property establishes that for the purposes of trademark registration examination, the IMPI must issue a first response within a maximum term of four months. This applies to various types of trademarks, including traditional and non-traditional trademarks, collective or certification trademarks, among others.
It is important to note that these deadlines refer to the time that IMPI must respond and not necessarily the total time that the registration process would take, since there may be requirements or official actions that extend the time until the final decision.
The procedure in Mexico begins with the publication of the trademark application in the IMPI Gazette. After publication, any interested party has a period of one month to file its opposition, arguing causes of impediment to registration based on the applicable legislation or contravention of public order and other legal provisions. Arguments and evidence must be submitted at this time. IMPI then notifies the applicant about the opposition, who has two months, extendable for two more, to respond as it will be considered in addition to the impediments or requirements of form that IMPI considers in the opinion. If the applicant does not respond, the application is considered abandoned.
If IMPI issues an objection to the registration, applicants have two months from the date they are notified of the official action (with the possibility of a two-month extension) to respond to any objection and any opposition filed. This may delay the processing of the application for an additional six months from the time of the response to the request.
Once a Mexican Trademark is Granted
Holders of Mexican trademark registrations have specific obligations for the preservation of their rights:
- Declaration of Use: File a declaration of use within three months following the third anniversary of the date of grant of the trademark registration.
- Renewal: Request the renewal of the registration every ten years, counted from the date of filing the application for registration.
- Update of Data: Notify IMPI of any change in the name or address of the owner or in the ownership of the registration due to a transfer of rights.
- Trademark Warnings: Use the ® symbol to indicate that it is a registered trademark, which is not mandatory, but helps to inform the public and potential infringers about the registered status of the trademark.
- In Mexico, the law provides that the holder of a trademark registration or its authorized licensee must use the mark in commerce within three years of its registration and continue its use to avoid forfeiture for non-use. This is vital for owners that do not operate directly in Mexico, as they must ensure that the mark is used in the national territory, either themselves or through a licensee, to maintain legal protection of the mark. Lack of use may be cause for third parties to request the cancellation of the trademark registration before the IMPI.
These measures help to maintain the legal protection of the trademark and to avoid its revocation or cancellation. In addition, compliance with these obligations is essential to take legal action in case of infringement of trademark rights.
Challenges and Resolutions in Trademark Registrations in Mexico
If IMPI denies the registration of your trademark, you may challenge such decision by filing an administrative appeal before IMPI or through a nullity action before the Mexican Federal Court of Administrative Justice, which has a specialized chamber for intellectual property matters.
In the case of trademarks that are widely recognized in other markets, Mexican law may provide protection if you can demonstrate that your trademarks are known to Mexican consumers or recognized worldwide. This protection means that IMPI must reject third party trademark applications for these types of marks, provided you follow the procedures for IMPI to grant such recognition, so trademark owners register their “famous” or “notorious” marks as a precautionary measure and because the cost of registering a mark in Mexico is insignificant compared to the cost of litigation in which you have to prove that you never needed to register a mark because it was already known.
If a trademark has been registered by a third party, it is possible to remove the trademark registration through a nullity action, based on the following grounds:
- The trademark registration was improperly granted.
- A third party claims the trademark due to prior use in relation to the same or similar goods.
- The registrant’s assertion of prior national use in its application form is inaccurate.
- The registration was obtained in bad faith.
Do Not Wait to Protect Your Trademarks in Mexico
Since trademarks are often a company’s most important asset, many people register the names and logos of foreign companies in Mexico (and elsewhere) and then attempt to sell the trademark “back” to the foreign company. Trademark prices in these transactions are often much higher than what it would have cost the foreign company to secure the trademark by registering it as described above.
If you are going to do business in Mexico, one of the first things you should do is to hire an experienced Mexican trademark attorney to help you determine the best way to protect your brand names and logos (and perhaps even your sounds and colors, etc.) in Mexico.
Make sure your brand identity is protected, recognized and respected, no matter where you choose to operate.
