Trademarks and service marks are visible signs that distinguish products or services from others of the same type or category on the market. A word, slogan, design, three-dimensional shape, the name of a person, or any combination thereof may be registered as a mark.
Mexican law recognizes 4 types of marks:
•Nominative (standard character format) - a word orseries of words.
•Non-nominative - designs, logos or other distinctive visual elements.
•Three-dimensional forms - containers, packaging or product configurations.
• Stylized - combinations of any of the above, such as a word together with a design.
What are "trademark related rights"?
In addition to trademarks and service marks, the law recognizes and protects thefollowing types of distinctive signs:
Used by associations of manufacturers, traders or service providers to distinguish their members' products or services from those of third parties.
Used by businesses to identify and distinguish themselves. Unlike a trademark, a trade name is protected only in that location where the business isknown.
Distinctive words used to distinguish businesses or their products or services from others of the same kind.
What are the benefits of registration?
Trademark registration confers the exclusive right to use the mark in Mexico and the right to take legal action against infringement.
Registration and publication of a trade name confers a presumptionof good faith adoption and use.
Is a trademark search necessary?
It is advisable to conduct a search of the office records before filing an application. A search for pending, registered and dead trademarks may be conducted on the Mexican Institute of Industrial Property (IMPI) website.
How is a trademark registered?
An application for trademark registration is filed with the IMPI. Theapplication must contain the following:
• The name of the registrant.
• The registrant's nationality and domicile.
• A depiction of the mark.
• An indication as to whether the mark is nominative, non-nominative, three dimensional or Stylized thereof.
• A description of the goods or services. (The application may only cover goods or services in a singleinternational class. Multiple applications must be filed to cover multiple classes of goods and services.)
• The date of first use in Mexico, if the mark is in use, or an indication that the mark is not in use.
• If priority is claimed under an international treaty, the date of the filing application and country of origin. (The certified priority document must be filed within threemonths of the application date.)
• A proxy, if the application is filed through a legal representative.
• Payment of Government fees.
How many exams does IMPI perform after the application has been filed?
IMPI conducts two exams of the mark:
1.-As to form To ensure that the registrant has completely and accurately filed all necessary information and documentation,and paid the corresponding Government fees.
2.-Substantive To determine whether the mark may be registered or not.
How long does a trademark registration last?
A trademark registration is valid for 10 years from the date of the application and is renewable indefinitely for like terms. The registrant must file an Affidavit of Use stating that the mark is being used in Mexico andthat use has not been interrupted for more than 3 consecutive years.
May an application or registration be assigned or licensed?
Trademark applications and registrations (except registrations for or applications to register collective marks) may be assigned by written agreement. Trademarks may also be licensed by written agreement. The law does not require that licenses contain provisions for...