In order to protect a trademark and have exclusive rights to it in Mexico, trademark registration is necessary. Prior use of a trademark is not necessary in order to file a trademark or for the trademark to be finally admitted for registration. Local trademark registration in Mexico is done through the Mexican Institute of Industrial Property (IMPI).
If you register for a combined trademark (which includes both word elements and figurative elements) in Mexico, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Applied-for trademarks are published online. During the examination period the trademark office may refuse trademarks that are identical or confusingly similar to previously filed or registered marks. Please note that the trademark process in Mexico does not contemplate a pre-registration opposition period. Therefore, trademarks owners are not able to oppose trademarks that they may consider to conflict with theirs before they are registered. However, in practice a written statement may be presented during the registration process of the conflicting mark in order to bring to the attention of the examiner how the acceptance of a mark would affect the prior rights of other owners.
Once a trademark is registered, cancellation actions may be presented by owners of earlier registered trademarks. In these cases, the cancellation actions must be presented within three (3) years from the date on which the trademark is published as registered in the Intellectual Property Gazette. Probabilities of success for a cancellation action (post-registration opposition) will vary in each case depending on the circumstances.
A registered trademark in Mexico will have a validity period of ten (10) years from the date of application. A trademark may be renewed for subsequent periods of ten (10) years. Trademarks may be renewed up to six (6) months before the date of expiration. If a trademark is not renewed before its date of expiration, renewal of the trademark is still possible for up to six (6) months upon payment of late fees.
Although, as previously stated, use of the trademark is not necessary in order to file or register it, if a trademark is not used once it is registered, cancellation actions based on non-use may be presented by third parties. Cancellation actions may be presented against any registered trademark in Mexico that goes unused for a period of three (3) years. In order for a trademark to be considered as having being used in Mexico, such use must have taken place on a commercial scale.
Mexico is a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.