Trade and Service Marks
– Industrial Property Law of June 27, 1991.
– Amendments of August 2, 1994, October 25, 1996, December 26, 1997, May 17, 1999, January 26, 2004, June 16, 2005, January 25, 2006, May 6, 2009, January 6, 2010, June 18, 2010, June 28, 2010, January 27, 2012, April 9, 2012, June 1, 2016, April 27, 2018, and August 10, 2018.
– Regulation on the Industrial Property Law published on November 23, 1994.
– Amendments of September 10, 2002, September 19, 2003, January 6, 2010, June 18, 2010, June 10, 2011, and December 12, 2016.
– Federal Law for the Protection of Industrial Property, in force since November 5, 2020.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 14, 1975.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 14, 1995.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since January 26, 2001.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act, since January 26, 2001.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since March 21, 2001.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since February 19, 2013.
Note: during an undefined transitional period, both the Industrial Property Law (IPL) of June 27, 1991, as amended, and the new Federal Law for the Protection of Industrial Property (FLPIP) of November 5, 2020, will apply to trademark applications and registrations (to some extent) depending on their date of filing. The summary provided below corresponds to the provisions of the FLPIP, applicable to trademarks filed on or after November 5, 2020.
Applicant: the applicant can be a natural person or legal person.
Types of marks: trademarks, service marks, product marks, non-traditional marks, and certification marks.
Distinctiveness: a word mark to be registered must be distinctive, that is, different from any other trademark or service mark. In other words, it should not be identical or confusingly similar to another previously registered trademark or service mark for the same or similar products or services.
Not registrable: (a) proper, technical or common use names of the products or services to be protected by the trademark, even when these are in a foreign language; (b) words that, in common language or in commercial practice, have been converted into a usual or generic denomination of the products or services to be protected, as well as those words lacking distinctiveness; (c) three-dimensional forms or industrial designs that belong to public domain or that became part of common use and generally those that lack distinctiveness; (d) the usual and ordinary form of the products or that is imposed by the nature or functionality of the product; (e) holograms pertaining to the public domain or those lacking distinctiveness; (f) signs the features of which are descriptive of the products or services to be protected including those that designate the species, quality, quantity, destination, value, place of origin or epoch of production of the products or the presentation of services; (g) isolated letters, numerals or their names and colors, unless they are combined or accompanied by elements giving them a distinctive character; (h) those word marks reproducing or imitating without authorization badges, flags or emblems of any country, state, municipality or similar political entities, denominations, initials, symbols, badges, name of programs or projects or any other sign of international, governmental, intergovernmental or non-governmental organizations or any other organization officially recognized, as well as the verbal designation of the same; (i) those signs reproducing or imitating official guarantee and control seals adopted by a state, without authorization of the corresponding authority; (j) those reproducing or imitating coins, bank bills and other national or international official means of payment or official commemorative coins; (k) those signs reproducing or imitating decorations, medals or other prizes obtained from officially recognized expositions, exhibitions, fairs, congresses, cultural or sports events; (l) those signs identical or confusingly similar to commonly known geographical areas; maps, names of settlements, or demonyms, names or adjectives, when the names indicate the source of the goods or services and may cause confusion or error as to their origin, including those signs that are accompanied by expressions such as "gender", "type", "manner", "imitation", "produced in", "manufactured in" or the like causing confusion to the consumer or unfair competition; (m) those signs identical or confusingly similar to appellations of origin, geographical indications or to the names or signs of places characterized by the manufacture, production or commercialization of determined goods or services, where the requested goods or services are identical or similar to the former ones or to those protected by the appellations of origin or geographical indications, this provision includes those signs that are accompanied by expressions such as "gender", "type", "manner", "imitation", "produced in", "manufactured in" or the like causing confusion to the consumer or unfair competition; (n) the names of places privately owned, without the owner's authorization, where they are special and unmistakable, and are characterized by the production of certain products or the offer of certain services; (o) the names, last names or pseudonyms of persons who acquired such a prestige, recognition or fame that when used may create risk of association, induce to error, confusion or deception to the consumer public, unless the applicant is the person or consent was previously obtained, this prohibition extends to the image, identifiable voice, signature, portraits of a person, without consent; (p) the names or denominations identical or confusingly similar to titles of literary or artistic works, as well as the reproduction or imitation of elements contained therein, when such a work has acquired such a relevance or recognition that the sign can deceive the public or induce to error, unless the corresponding authorization from the author of the work is obtained; human personages of characterization cannot be registered as trademarks without the owner's consent; (q) signs being equal or confusingly similar to a mark that has been declared or estimated as well-known or famous, except when the applicant and the trademark owner are the same; (r) signs being equal or confusingly similar to a pending trademark application or registered trademark in Mexico, for the same or similar goods or services, the provision applies to the case where the applicant is the same as the applicant/owner of the previous application/trademark, the signs involved are the same, and the goods or services are the same; (s) a trademark identical or confusingly similar to a commercial name applied to a company or industrial, commercial or service facility which main business is the manufacture or selling of the products or the provision of the services intended to be covered by the trademark, provided the commercial name was used before the filing date of the trademark application or before the corresponding declaration of previous use, unless the trademark applicant and the owner of the commercial name are the same person; (t) the person's names, last names or nicknames being equal or confusingly similar to a pending trademark application or registered trademark or published commercial name where the sign is to be applied to the same or similar goods or services; (u) signs reproducing or imitating denominations or elements which refer to protected plant varieties or animal races, where said signs may create confusion in the consumer public with respect to the products or services to be covered; (v) signs the registration of which is applied for under bad faith.
Letters of consent: are accepted to avoid rejection of a trademark registration being equal or confusingly similar to another which is applied to the same or similar goods and/or products (see below).
Acquired distinctiveness (secondary meaning) can be argued, if needed.
Well-known marks: divided into notorious and famous marks. A notorious mark is one known by almost all of the consumer public or when diffusion and recognition is held in the global commerce. To obtain any of said declarations it is compulsory to submit specific information and to pay the Institute's fees.
Priorities: are accepted under the Paris Convention.
Filing requirements for an application (to be sent to resident agent):
1. Applicant’s name, address and nationality;
2. List of products or services to be protected; the products or services must fall into one single class of the International Classification;
3. 1 print or picture of the design mark;
4. Location of applicant’s principal establishment or factory (only if a date of first use is claimed);
5. If priority is claimed, mention of the filing date and number;
6. Date of first use in Mexico (if any).
Note: the submission of a power of attorney is not mandatory, although highly recommended.
Electronic filing: available.
Electronic signatures: are accepted for filing applications, writs, payments and responses to official actions, however, for power of attorney or assignment documents wet signatures are recommended as no specific provisions exist for the acceptance of electronically signed documents of this type. Scanned copies of documents are accepted when using the electronic filing system. The Mexican Institute of Industrial Property is entitled to request the original document at a later date. For paper filings, scanned copies cannot replace the originals.
For a change of name: a document attesting to the change of name, in original or a notarized and legalized copy (a scanned copy is accepted for recordal filed online). Note: the submission of a power of attorney is not mandatory.
For a change of address: no document is required.
Amendments: possible in applications before grant. In granted registrations it is possible only to restrict the list of products or services.
Examination: to evaluate the fulfillment of formal requirements and novelty in a single office action, if any.
Opposition: all applications will be published for opposition purposes within ten business days from the filing date. Any person may oppose the registration of a published application within one month from publication, non-extendible. If an opposition is filed, the Mexican Industrial Property Institute will inform the applicant of the opposition during the examination period. The applicant will have a two-month term to prepare and file a response to the examination results, including arguments against the opposition, if any. This term can be extended by two months by paying a fee.
Remedy of irregular filings: possible within a term fixed in an official action (maximum two months, extendible for two months automatically).
Objections regarding novelty: in this case, an official action citing prior registrations will be issued, and the applicant may, within the fixed term (maximum two months, extendible one time), choose between (a) substituting the mark objected, or limiting the goods or services in order to overcome the cited prior registrations; (b) presenting arguments against such citations; (c) filing a letter of consent from the owner of the cited anteriority. The original of the letter of consent does not need further formalities. However, if a copy is filed, notarization and legalization are necessary. When using the electronic system, a scanned copy of the letter of consent or its notarized and legalized copy is suitable. A single office action is to be issued during examination. The administration will then issue its final decision allowing or rejecting the application.
Disclaimers: not available.
Appeal against final action: must be filed within thirty days at the Special Branch for Intellectual Property Issues of the Federal Tribunal for Administrative Justice.
Urgent and provisional registrations: impossible.
Publication: every registration is published in the Gazette of Industrial Property.
Correction of registration: possible only when errors were made by the administration.
Delivery of document: the Mexican Institute of Industrial Property issues the official certificate of registration after granting. The certificate is issued in electronic format only.
Duration: ten years counted from the date of grant
Renewal: the trademark should be renewed every ten years.
Use conditions: registered trademarks must be used within the national territory as registered or with modifications not altering its distinctive character; real and effective use of the trademark shall be declared within a term of three months after three years of the date of grant; protection will continue solely for the products and services covered by the declaration of use; lack of said declaration causes the trademark to expire; declaration of real and effective use is also necessary when paying renewals, in this case, if the declaration is omitted, the Mexican Institute of Industrial Property will grant a two-month term to submit the missing declaration; the trademark will automatically expire if no declaration is filed within said term; a trademark registration can be cancelled for lack of use if it is not used during three consecutive years prior the cancellation action is filed by a third party.
Licenses: the owner of a registered trademark may grant a license for use to one or more persons via contract, in relation to all or some of the products or services to which the trademark applies. A franchises exists when, with the trademark use license, technical knowledge or technical assistance is provided to the licensee in order to produce or sell goods or services in a uniform way and with operative, commercial and administrative methods, established by the trademark owner, tending to maintain quality, prestige and image of the goods or services, which the trademark protects.
Prohibition of use of marks: the Mexican government can declare exceptionally for public interest reasons that certain trademarks cannot be used.
Registration of invalidated marks: once the mark is already lapsed, any third party can apply and obtain the trademark, even the person who was the owner of the trademark, should he apply for it before a third party.
Modification of Protection after Registration
Restriction of the list of goods: the number of products covered by a trademark can be reduced but cannot be increased; neither can the mark nor the design be changed.
Modification of the mark: the trademark must be used exactly as it was granted, or with small changes that do not alter its distinctive character; any other use has no legal value.
Assignment: trademarks can be assigned by registration before the Mexican Institute of Industrial Property.
Nullification – cancellation: Mexican Law establishes that the registered trademarks can be nullified or cancelled in the following cases: (a) when a trademark has been granted in violation of the current law or the law in force at the time of granting; (b) when the trademark is identical or confusingly similar to another mark that has been used in Mexico or abroad prior to the filing date of the registered trademark, covering the same or similar products or services, provided that the party arguing prior use proves that the trademark has been used without interruption before the date of filing or declared use by the challenged trademark; (c) when the trademark owner does not demonstrate the veracity of the date of previous use declared in the corresponding application; (d) when, by error, oversight or difference of opinion, the registration is granted despite the existence of a previously filed trademark application or previously granted trademark being considered infringed because the first trademark is identical or confusingly similar to the second one and covers identical or similar products or services; (e) when the agent, representative of the owner, user or distributor or any other party who had a direct or indirect relationship with the trademark owner of a trademark registered abroad applies for and obtains the registration of the same or confusingly similar trademark in his name without the consent of the owner of the foreign trademark; (f) when the trademark registration was obtained on bad faith basis. Partial non-use cancellation and nullity actions are available, if successful, a marginal note in the relevant registration will indicate the affected coverage and relevant action that affected such coverage. If the plaintiff previously obtained an unfavorable decision in an opposition and later files a nullity action against the corresponding registration using the same grounds and evidence as that used in the opposition procedure, the nullity action will be dismissed.
Terms for action: cancellation proceedings based on paragraphs (a), (e) and (f) can be initiated at any time; proceedings based on paragraphs (b) to (d) can be initiated in a term of five years. The mentioned terms shall be counted from the corresponding publication of the trademark registration in the Industrial Property Gazette.
Expropriation of trademarks: can be done only due to public interest reasons.
Compulsory licenses: the Mexican government has also the right to grant compulsory licenses when public interest requires it, provided that the trademark owner is guaranteed hearing rights. A trademark declared nullified or cancelled cannot be revived.
Infringement: Mexican Law establishes that the falsification of registered trademarks for commercial speculation purposes is a crime. Infringement is an administrative violation deserving a fine and the payment of damages. This also includes the use of a sign confusingly similar to a registered trademark. A legitimate trademark owner can obtain damages through either a motion filed before the Mexican Institute of Industrial Property after obtaining an enforceable infringement decision or directly through a civil litigation. The Institute can issue an award of damages and quantify the amount of damages owed to the legitimate trademark owner.
Business Advertisements and Commercial Names
Definitions: Business advertisements are phrases or sentences that have the object of announcing to the public, commercial, industrial or service establishments or businesses, or goods or services, to distinguish them amongst others of the same nature or class; Trade names or Commercial names are names of companies or industrial, commercial, or service establishments. Registration of commercial names is not necessary.
Protection: the protection of commercial names extends to the geographical area of the effective clientele of the company or establishment or to the whole Republic; its publication in the Industrial Property Gazette has to be requested.
Validity – extension: both have a validity of ten years counted from the date of registration, extendible by equal periods.
Filing requirements: generally, the same as for “Trademarks” above.