Where can I register a trademark in Mexico?
Trademarks in Mexico are registered before IMPI (Mexican Institute of Intellectual Property), which is the Official Authority responsible for receiving, examining, and granting trademarks, patents, designs, and other Intellectual Property rights in the country.
Requirements for registering a trademark in Mexico
Before registering a trademark before IMPI, we recommend that you clearly define the sign that will constitute the trademark. This may be, among others:
- A name, letter, number, figurative element, or combination of colors;
- A three-dimensional shape;
- A proper name of a natural person;
- A sound or smell;
- Etc.
In order to obtain a trademark registration in Mexico, an application must be filed before IMPI together with certain information. The most important pieces of information are:
- The applicant's name, address, and email;
- A representation of the sign that constitutes the trademark;
- The date of first use of the trademark or, if applicable, a statement that it has not been used;
- The specific products or services to which the trademark will apply;
- The elements for which protection is not sought and which are reproduced in the trademark;
- The description of the trademark, where applicable;
- The location of one or more establishments or businesses related to the trademark, provided that the date of first use has been indicated;
- A statement that standard characters have been used, where applicable;
- A statement of geographical indication, where applicable.
In addition, the trademark application must include the proof of payment of the corresponding fee.
Many rejections or delays in trademark registration are caused by non-compliance with the necessary requirements and/or the failure to address various factors, such as:
- Incorrect choice of class of goods and/or services;
- Lack of distinctiveness;
- Select an already registered trademark;
- Failure to meet deadlines;
- Failure to comply with the formal requirements in the application;
- Failure to respond in time to an opposition or an office action.
Therefore, it is always advisable to have expert local trademark attorneys reviewing the legal feasibility and managing the case correctly from the outset.
Who can register a trademark before IMPI?
Any individual or legal entity (company) that wishes to legally protect its trade name, logo, or any mark that identifies its products or services with a legitimate interest.
How to register a trademark before IMPI?
Registering a trademark before IMPI is the legal process that grants the exclusive right to use the name, logo, or identity of a product or service in the Mexican territory.
1- Analysis of registration viability.
Before filing the application, it is essential to verify that the trademark is not already registered or similar to another existing one.
At UNGRIA, we have expert trademark attorneys in our office in Mexico who can advise you and conduct a trademark registration background check and a registration viability report to assess whether your trademark is registrable and thus avoid conflicts from the outset.
2 – Define what you are going to register and in which class.
You must be clear about:
- The type of trademark (name, logo, both, etc.);
- The products or services you are going to protect;
- The class to which they belong, according to the Nice Classification.
Example: if you sell clothes, you need to register the trademark in class 25.
3 – File the application before IMPI.
You can do this either online or in person, and you must file the trademark application along with the information mentioned above.
4 – Publication of the application.
Once the application has been received, IMPI will publish it in the Official Gazette within 10 days of receipt and will grant a non-extendable period of one month from the date on which the publication takes effect for any interested third party to oppose the application for registration or publication.
Once the one-month period has expired, the application will be examined.
5 – Substantive and formal examination.
In case there is no opposition, or said opposition is resolved in your favor, then IMPI will conduct a substantive and formal examination to verify that your trademark:
- Is legal;
- Is distinctive;
- Is not generic nor misleading.
Should everything be correct, then IMPI will issue a favorable decision.
If the application or the documentation submitted does not comply with legal or regulatory requirements, or if there is any impediment to the registration of the trademark, the Institute will notify the applicant in writing. If an opposition to the application is filed, IMPI will notify the applicant so that it may respond and submit any evidence deemed appropriate.
In this case, the applicant has two months to respond to the corresponding communication, with the possibility of extending the deadline for another two months, without having to reapply, but paying the corresponding fees.
In this regard, it is important to note that in case the applicant increases the number of products or services for which registration is sought, or replaces or changes the product or service indicated in the initial application, the application will be subject to a new procedure.
6 – Obtaining the certificate of registration.
Once the application process has been completed and the legal and regulatory requirements have been met, the trademark becomes valid for 10 years and can be renewed indefinitely.
From that moment on, the trademark is legally protected throughout Mexico.
Finally, it should be noted that the trademark owner must declare its actual and effective use, indicating the specific products or services to which it applies.
This declaration must be filed before IMPI within three months of the third anniversary of the registration being granted.
Unfortunately, many trademark owners tend to neglect their trademarks, and without a local attorney, it is common that the compulsory declaration of use is filed late, resulting in the loss of the trademark and the need to file a new application.
How long does it take to register a trademark?
If there are no oppositions nor official requirements, the entire process usually takes between 4 to 6 months from the date the application is correctly filed.
There are several factors that can speed up the process:
- Submitting a well-structured application from the outset, complying with all requirements;
- Conducting a preliminary search to avoid future oppositions;
- Choosing the correct class(es) from the outset;
- Working with a local trademark attorney.
Is a trademark registration in Mexico valid internationally?
No. Trademark law is subject to the principle of territoriality, meaning that it is protected in the country where it was applied for and registered. If you are interested in registering a trademark internationally, a good recommendation would be to refer to the “Madrid System.”
Finally, you should bear in mind that if you do not have a registered address in Mexico, you must appoint a legal representative to receive notifications and respond to IMPI, who will act with a power of attorney signed by the foreign applicant.
Do you want to register a trademark in Mexico?
At UNGRIA, we have a local team of trademark attorneys that can advise and assist you if you want to register a trademark:
- Filing and prosecution of the application;
- Research of prior registrations;
- Registration viability report;
- Trademark surveillance;
- Renewals and maintenance;
- Opposition proceedings against third parties;
- Registration of changes of ownership and assignments;
- Review and drafting of trademark-related contracts;
- Protection strategies for the defense of the registered trademark.
Please, do not hesitate to contact us for more information.