Since the inception of the North American Free Trade Agreement, Mexico has been a popular destination for many American companies looking for low-cost manufacturing centers and a stepping stone to accessing Latin markets. Mexico has a large and dynamic workforce that guarantees a high-quality finished product, and the lack of trade barriers means that those products can quickly and reliably be transported back to the United States for final sale.
As your business becomes a global enterprise, protecting the intellectual property (IP) that maintains your critical edge in the U.S. becomes even more important. Mexico provides a robust and internationally aligned legal framework for IP rights, so with the proper knowledge and help, you should have all the tools you need to register and enforce your intellectual property.
Just like with any other country, if you are expanding your business into Mexico, it pays to hire an experienced local legal team that specializes in business and IP law. Firms like De Alva & Asociados can provide you with a specialized legal council that will facilitate the IP registration process and expedite legal proceedings if they are needed down the line.
1. An Overview of IP Protection Laws And Organizations In Mexico
In addition to a number of specifically U.S.-Mexico trade agreements, Mexico has become a signatory to many key international financial treaties to modernize its economy and make the country more attractive to outside investment. These include the Paris Convention for the Protection of Industrial Property, TRIPS, and USMCA, among many others, bringing Mexico’s IP protection and enforcement laws in line with international standards.
Like the United States, Mexico defines intellectual property as one of three categories: trademarks, patents, and copyrights. Each category has its own identification, registration, and enforcement process. It is always recommended that you enlist the legal services of intellectual property attorneys in Mexico to ensure the registration is handled correctly and enforcement can be performed by a team familiar with your company’s IP.
2. Trademarks
In Mexican law, a trademark is defined as any sign that is perceptible by the senses and can be represented in a way that distinguishes products or services from others of the same kind. Much like in the United States, trademarks are essential to a company’s branding and must be protected to ensure copycat products cannot use your company’s distinguishing marks.
Registration
Registering your U.S. trademarks in Mexico requires working with the Mexican Patent and Trademark Office, otherwise known as the Mexican Institute of Industrial Property (IMPI). Initiating the registration usually involves performing a prior search to ensure that the trademark isn’t already registered or in the process of being registered.
The trademark owner would then complete the application form online using the Portal de Pago y Servicios Electrónicos (PASE). While the process is deceptively simple, the application must be filled out with total accuracy, or it will likely be rejected during the examination period.
Application details include:
- Applicant’s name, address, and nationality
- A description of the products or services
- A sample of the trademark
- The first use date of the trademark in Mexico
- A co-ownership agreement if there are multiple applicants
- A clear and precise representation of the trademark
The application will then undergo an Examination and Opposition period. During the examination phase, the IMPI will analyze the trademark to determine if it is suitable for registration. During the opposition period, the IMPI publishes the mark in an official gazette, allowing interested parties to file an opposition to the registered mark.
Once the application has completed its examination without objections, the IMPI will grant registration of the mark. Trademarks are registered for a 10-year term, and can be renewed in the subsequent 10-year period. A declaration of use must be filed during the three months following the third anniversary of the registration, or else the registration will lapse.
Protection and Enforcement
Once the trademark has been registered, the owner of the mark can use both criminal and civil measures to protect and enforce their rights. The IMPI provides administrative enforcement mechanisms, including seizure of counterfeit goods and fines for those in breach of the law.
If a trademark holder becomes aware of a competitor or copycat seller using their mark or one that is confusingly similar to their mark, they can request to the IMPI that:
- any infringing products, packaging, publicity, or any other material using the mark be removed from circulation,
- sales of the goods prohibited,
- and the lending of services cease and infringing establishments be closed.
Infringement actions can take from two to three years before a ruling is reached, and losing party can make appeals that can take a further year or more to resolve. It is highly recommend that you work with a Mexican trademark attorney during this period to ensure that they can respond promptly to any motions made during proceedings.
3. Patents
Patents in Mexico serve the same purpose as they do in the United States: granting exclusive rights over inventions and processes that you or your business have recently created. Patents are granted in a first-to-file basis, so if you are planning to do business in Mexico, it is highly recommended that you register your U.S patents in Mexico before beginning production or selling your products cross-border.
Registration
The first step in registering your patent in Mexico is performing research to ensure that the invention is unique and meets the primary criteria the IMPI designates for new patent applications. Once you have determined the invention meets this criteria, you can begin to fill out the patent application.
Patents in Mexico need to meet three primary criteria: they need to be all-new, they need to be inventive, and they must be industrially applicable. If the invention is an application or procedure that has been made publicly available, if it’s something easily derived from a publicly available source, or if it can be produced or used in any type of industry, it will likely be rejected during the application process.
The registration process involves the filing of the patent application to the IMPI, specifications of the invention and the parameters of protections afforded to it, and payment of the corresponding application fees.
For foreign entities applying for a patent, you may also need to include additional documents to submit the application. This includes an assignment if the applicant is not the inventor and the application is being filed by the Paris Convention, priority documentation for Paris Convention applications, and apostille or legalized documents showing proof of identity and that you were responsible for the invention.
Once the application has been filed, it will undergo an examination period similar to the trademark process. The application will undergo a formal examination by IMPI assessors that determines if the invention meets the primary criteria mentioned above. If the requirements are not met, the examiners will request corrections, which need to be made during the specified timeframe or else the application will be rejected.
Corrections are a common roadblock found in the registration process, which is why it’s highly recommended to begin working with a Mexican patent attorney during the early stages. Your attorney can quickly and easily make any necessary corrections without interrupting or delaying the application process.
The application will then be publicized in the IMPI’s official gazette, at which point third parties can make observations or objections. A final substantive examination will determine if a patent complies with the primary criteria. Similar to the first formal examination, examiners will request corrections if the invention’s description does not comply fully with the criteria.
Once the corrections have been made, the IMPI will grant the patent, at which point the certificate will be issued and the owner will have full control over the invention or process.
Protection and Enforcement
Once the certificate is in hand, any and all infringement actions will be handled by the IMPI. Enforcement of IP rights in Mexico is the responsibility of the party that holds the certificate, which means that companies doing business across borders need to be vigilant and timely in their assertion of their rights.
Once an infringement is observed by the patent holder, they will need to submit an initial brief to the IMPI that includes what IP is being infringed and evidence of infringement. The IMPI will then serve the action to the defended, who can then file a response before an initial inspection.
For patents, the litigation department of the IMPI will request an issuance of a technical opinion on whether or not the patent has been infringed. This opinion will serve as evidence during proceedings. Once the process is completed, the IMPI can impose an administrative penalty on the infringer, including fines and a closure of the establishment. The process usually takes three to four years.
During proceedings, it’s highly recommended that you work with a Mexican patent lawyer to ensure that inquiries and requests are handled promptly and completely. Attorneys like De Alva & Asociados are essential in helping monitor for infringement and filing for infringement actions promptly, before statutes of limitations limit what actions you can take to protect your IP.
4. Copyrights
Copyrights deal with the less tangible forms of intellectual property, including literary, musical, and artistic works, as well as more commercial intangibles such as software. Much like the rest of the world, copyright laws in Mexico automatically apply to creative materials once they are fixed to a tangible medium of expression, including through online mediums.
Despite this, it is highly recommended that an owner register their U.S. copyright in Mexico if they plan on commercializing it within Mexican borders. The act of registering it means they can pursue enforcement mechanisms that can punish pirate activity, unauthorized sale or use of the work in a way the author disapproves of.
Registration
Registration of a copyright is handled by the National Institute of Copyright rather than the IMPI. Copyrights in Mexico are considered works, which are personal expressions manifested in different forms with the possibility of being disseminated to a medium and reproduced to the public in various forms.
In order to be considered for registration, copyrights need to be original creations with enough originality to differentiate them from similar works. Unlike patents and trademarks, registering a copyright is merely a declaration and does not in itself constitute a right. This means copyright registration merely serves as a presumption of property over a work.
Applications for copyright protections are submitted online via the MCO, which grants a Certificate of Registration for the work. A copy of the work and identification of the creator need to be filed, at which point the copyright office performs a 30 day investigation into the application to determine the validity of the work. Once granted, a copyright is granted for a period of 100 years to the owner of the work.
Protection And Enforcement
Authors and creators have the right to demand that infringing parties be taken down or removed from online publications. They can file a claim to the NCO, which will then issue takedown notices to publishers that are found to be hosting the infringing material.
Criminal actions can be filed before the Mexican Attorney General’s Office to enforce takedown notices and begin proceedings against infringers. Administrative remedies can be filed before the IMPI, which will enforce punitive damages, the confiscation of unauthorized/counterfeit/pirated goods, and closure of organizations found to be infringing on intellectual property rights.
Online service providers, once notified, must unilaterally withdraw all related materials, terminate the accounts associated with infringers, and end any financial stake in the replication and dissemination of the work. Failing a prompt response to notices, these institutions are liable for damages and may be subject to criminal action.
Copyrights are notoriously difficult to protect and prosecute even in the United States, which means that copyright holders are heavily recommended to use the services of Mexican copyright attorneys when doing business in Mexico. These attorneys can help monitor the use of protected works and immediately begin proceedings against pirates and institutions engaging in producing forgeries.
Securing and enforcing your intellectual property rights is key to a successful expansion of your business into the wider world and Mexico in particular. Navigating the cultural and legal landscape in Mexico requires understanding local business practices and legal nuances, which is why it’s absolutely essential to hire on an effective local Mexican IP law firm to help register and protect your IP abroad.
De Alva & Asociados is dedicated to being the best option for Intellectual Property legal services in Mexico, under the commitments of responsiveness, clear communication, and proficiency. If interested, get in contact with De Alva & Associates today!