The following are some key aspects under Mexican Trademark Law which are not considered when designating Mexico to extend protection of a Madrid-based international trademark registration:
1. Shortest time frame of application granting (Paris System beats Madrid System by far).
The time frame involving the process of a trademark application –starting from filing the application its conclusion– is a crucial aspect for securing protection of a trademark in the shortest time possible.
Whereas a Madrid-based designation in Mexico to extend protection of an international trademark registration may take up to 12-18 months (considering the exchange of several communications between WIPO and the Mexican IMPI), the process of locally filed trademark applications before the Mexican IMPI takes an approximate time frame of 4-5 months, provided no office actions or third-party oppositions are raised during the process.
2. THREE-YEAR term Declarations of Use for all registrations granted in Mexico.
The obligation to file a Declaration of Use applies to all trademark registrations granted in Mexico on, and after August 10, 2018.
This is another crucial aspect involving trademark protection in Mexico, which applies equally to all registrations granted in Mexico, whether based on approved locally filed applications or from approved Madrid-based WIPO designations of Mexico for extending protection of international registrations.
All trademark registrations granted in Mexico –whether from locally filed applications or approved Madrid-based designations of an international registration—are subject to filing a Declaration of Use, within a 3-month term upon reaching their third year, third year date which must be calculated from the registration date in Mexico.
3. More efficient Trademark registration RENEWALS and its TEN-YEAR Declarations of Use.
For registrations granted to local applications filed in Mexico, Paris Convention sets a 6-month term before, and a “grace period” of another 6 months following the date on which the registration has reached its 10th year. A ten-year Declaration of Use is obligatory jointly with the petition for renewal.
On the other side, renewal of international registrations (Madrid System) would still require filing an additional Ten-Year Declaration of Use for each Mexican registered designation.
Upon filing for renewal of an international registration before WIPO, a stamped reception of said petition will be published by the Mexican IMPI in its local TM gazette and databases, and the TM titleholder will have a 2 month term to file the 10-year Declaration of Use.
Such publication to calculate the 2 month term to file the Ten-Year Declaration of Use, will not be notified to the international registration holder, in which case it is OBLIGATORY to reach for local trademark agents in Mexico to monitor this process and file the 10-Year Declaration of Use for each registered designation in Mexico.
Conclusion: the most efficient system to obtain and administer a Trademark registration in Mexico is Paris System through a local agent.
Hope we may be of service to clear out any doubts and assist you with this topic.