Intellectual Property Law in Mexico managed by professionals.

Trademark Prosecution in Mexico

Before filing your trademark application(s) in Mexico, we highly recommend conducting a trademark availability search, in each of the classes of goods and/or services for which you wish to obtain protection, to determine whether there are any previously registered trademarks in force, and/or pending TM applications that might block your trademark application(s).

These trademark searches do not substitute clearance searches performed by trademark examiners during substantive examination of each application but do provide a useful preliminary insight on the possibilities for a trademark to be granted registration.Most of our trademark availability searches involving standard characterword marks are concluded within 1-2 days upon receipt of instructions, whereas they are concluded from 3-5 days involving logo marks.

A) FILING YOUR TRADEMARK APPLICATION

*For filing trademark applications in Mexico, no Powers of Attorney are needed.

**In Mexico, there are no multi class applications. Each trademark is filed, processed, and registered for 1 single class of goods / services, so if your goods / services fall within more than 1 class, we will need to file more than 1 application.

For preparing and filing your application, we require the following:

  1. Full name / company name, address, and nationality of the Applicant.
  2. Information on the mark – the trademark name and if any, the design and/or other elements.
    Trademark Logo – any image formatfile (.JPEG, .PNG, .GIF) would be sufficient.
  3. Address of the establishment or factory where the applicant’s goods are manufactured, or its services are rendered. (If any)
  4. Date of first use of the trademark in Mexico, on the goods and/or services involved. (If any) In this regard, the date of first use of a trademark in Mexico can be effectively proved with copies of invoices, purchase orders, and with other similar documents. Mexico does not require proving first use of the mark.
  5. List of thegoods and/or services intended to be covered with your application.
  6. *Foreign applicants – if you filed an application to protect the same trademark in another country during the past 6 months, and wish to claim it as a priority, we will require: the foreign application’s number, the filing date, as well as the country where the application was originally filed.

The complete process of a trademark application in Mexico is resumed in the following stages:

  • Initial filing of the application.
  • Publication of the application. (For opposition purposes)
  • Formal requirement / Substantive Examination (to determine if the application fulfills all legal and statutory requirements, as well as to determine if there are any legal objections for registration, and/or any formerly registered trademarks and/or formerly filed pending applications considered conflicting anticipations), and
  • Conclusion of the process, whether with granting or rejecting registration.If granted registration, 1 registration certificate (PDF version) is issued, per each class.Each trademark registration is granted in Mexico for a 10 (ten) year term, starting from the date on which the registration was granted.
  • Once the registration reaches its 3 (three) year term, it will be subject to filing a Statement of Effective Use.

The timeframe for processing TM applications in Mexico –between filing and registration– is of approx. 3 to 5 months, if no office actions or trademark oppositions are issued, and attended during the process.

For easy reference, the entire trademark application process is outlined in the following diagram:

trademark application process

A) Even though each trademark registration is granted in Mexico for a 10-year term starting from the date of grant, Mexican trademark law states that once each registration reaches its 3-year term, it will be subject to the obligation of filing a Statement of Effective Use, on the goods or services for which it was registered, for each class.

All trademark registrations granted in Mexico on or afterAugust 10, 2018, will be subject to this obligation, once each granted registration reaches its 3rd (third) year anniversary, starting from the date on which it was granted.

Starting from the date each registration reaches its 3-year anniversary, the Mexican Federal Law for the Protection of Industrial Property states a term of 3 months, starting from the third anniversary date, to file a Statement of Effective Use in Mexico.

Filing a Statement of Effective Use does not require submitting samples or specimens of use, nor does it require to effectively prove use of the trademark, since it constitutes a bona fide declaration –a statement in good faith— by means of which the trademark holder declares that the trademark in question is being used in commerce in Mexico, on the goods or services for which its registration was granted, for each class.

B) Statement of Effective Use must also be filed with a petition for renewal of the registration, reaching its 10-year

This obligation applies to all trademark registrations based on applications filed in Mexico, and to all registrations granted in Mexico based on a prior international registration or application filed before the World Intellectual Property Organization (WIPO) designating Mexico to extend protection under the Madrid Protocol.

The complete process of a trademark opposition in Mexico is resumed in the following stages:

  • Initial filing of the opposition writ, jointly with the legal arguments and supporting evidence.
  • Publication and notification of the opposition, granting the applicant a legal term to respond.
  • Final allegations, granting both the applicant and the opposing party a term for filing closing allegations, and
  • Final decision on the opposition – the examining authority issues a final decision on the opposition, whether supporting the validity or rejecting the opposing party’s legal merits.

Trademark oppositions in Mexico are filed and processed under the format of a litigation process, which involves studying the legal merits from both the opposing party and the trademark applicant, as well as the supporting evidence included, and the process will conclude with a final decision on the opposition.

If the examining authority merits the opposition, it will issue a final decision, and sustain grounds for a legal objection for registration and/or consider the opposing party’s trademark registration(s) or former pending application(s) as conflicting anticipations on grounds of novelty, in which case the applicant will be compelled to further expose legal arguments against such determination.

The timeframe for processing an opposition in Mexico –between filing and final decision– is of approx. 3 to 5 months, but it will not suspend the regular process of the trademark application subject to opposition, and if the examining authority rejects grounds on the opposition, it will nonetheless issue a final decision.

For further reference, the trademark opposition process in Mexico is outlined in the following diagram: