1 Relevant Authorities and Legislation

1.1 What is the relevant trade mark authority in your jurisdiction?

The relevant authority is the Mexican Institute of Industrial Property (IMPI).

1.2 What is the relevant trade mark legislation in your jurisdiction?

The most pertinent legislation is the Industrial Property Law (IPL).

2 Application for a Trade Mark

2.1 What can be registered as a trade mark?

In accordance with article 89 of the IPL, all visible signs can be protected, provided that they are sufficiently distinctive and able to identify the products or services to which they apply or intended to apply with respect to those in the same class.

2.2 What cannot be registered as a trade mark?

Olfactory and sound trade marks cannot be protected in Mexico. The limitations as to what cannot be protected as a trade mark are established in article 90 of the IPL, which is a list of prohibitions and the only legal source for rejecting a trade mark application. These prohibitions include:

  • marks that are identical or confusingly similar to previously registered marks or marks for which registration is pending or applied to the same or similar products or services;
  • descriptive and generic marks;
  • geographic indications and names of places that are characterised by the manufacture of certain products; and
  • three-dimensional forms of common usage, or because said form is imposed by its nature or industrial function.

2.3 What information is needed to register a trade mark?

The following information is required:

  1. An applicant's full name and street address, including town and country.
  2. Identification of the trade mark.
  3. Description of goods or services.
  4. Use in commerce in Mexico. Non-use basis applications are allowed under Mexican law, since use in commerce is not a requirement for obtaining registration. However, if the trade mark is already in use in Mexico, it is recommended to provide the full date (day, month and year). This first-use information becomes relevant for the applicant to be afforded priority rights over future applicants who eventually intend to challenge the registration based on use of a similar trade mark covering similar goods or services.
  5. Factory address, business address or commercial establishment (if the mark is in use in Mexico).
  6. Convention priority: if convention priority is to be claimed, it is required to provide the country of origin, application number, the date of filing and the exact description of goods and services.

2.4 What is the general procedure for trade mark registration?

Once the applications are filed before the IMPI, it takes from four to seven months for the IMPI to conduct the relevant examinations. The first is the formalities examination, whereby the IMPI checks that all of the formal requirements (information and documents) have been met, and verifies the correct classification of the products/services it is intended to protect. If any formal information or documents are missing, or if the products/services are not correctly classified, a requirement from the examiner regarding formalities will be issued, granting a two-month term that can be automatically extended for a further two months to comply with such requirements. The second examination refers to the "relative grounds" examination (prior rights on record) and "absolute grounds for refusal" examination (inherent registrability of the mark). Thus, if prior rights are revealed or an objection concerning inherent registrability of the mark is foreseen, the IMPI would issue an official action, granting a two-month term that can be automatically extended for a further two months to respond thereto.

2.5 How is a trade mark adequately represented?

For design or composite marks, it is necessary to provide a clear print thereof. If specific colours are to be claimed, then the label must clearly show the colours. For three-dimensional marks, it is necessary to submit a photograph showing the three dimensions in the same photo – height, width and length (front and back).

2.6 How are goods and services described?

Under Mexican law and practice, class headings can be claimed; however, when specific goods or services are not mentioned specifically within the class heading, it is strongly recommended to provide a description including each specific good or service to be protected, using the names of products or services exactly as they appear in the Nice Classification List.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

A Mexican trade mark registration is valid/enforceable only within the Mexican Republic.

2.8 Who can own a trade mark in your jurisdiction?

Article 87 of the IPL establishes who may use and therefore own a trade mark registration, stating: "industrialists, merchants, or service providers may use trade marks in industry, in commerce or in the services they render". Nevertheless, the right to their exclusive use is obtained through their registration with the IMPI. In Mexican practice, any kind of person or entity is entitled to apply for a trade mark registration before the IMPI.

2.9 Can a trade mark acquire distinctive character through use?

No. The Mexican IPL does not recognise the so-called "secondary meaning" doctrine.

2.10 How long on average does registration take?

If an application is filed complete and no oppositions are filed, no objections as to inherent registrability are issued and no prior references are cited by the examiner, registration may be granted within five to seven months as of the filing date. Otherwise, if oppositions are filed, or if formality requirements or references/ objections are cited by the examiner, the processing of the application may take quite a long time (between 12 and 18 months), and may conclude either in the granting of registration, or the refusal thereof.

2.11 What is the average cost of obtaining a trade mark in your jurisdiction?

If no classification requirements, oppositions and/or objections to registration are issued, the average costs for obtaining a Mexican non-priority trade mark registration are estimated at US$750.00.

2.12 Is there more than one route to obtaining a registration in your jurisdiction?

Yes. Besides the national route, as of February 19, 2013 it is also possible to obtain a trade mark registration in Mexico through the International (Madrid) System.

2.13 Is a Power of Attorney needed?

It is no longer compulsory to submit a POA along with a trade mark application, provided that the IMPI recognises the authority of the representative signing it through a declaration under oath contained in the application form. However, a valid POA must indeed exist, and it should have been granted (dated) prior to the filing of the application, otherwise the declaration contained in the application form in connection with the representation may be deemed false, thus affecting the validity of the eventual registration to be obtained.

2.14 If so, does a Power of Attorney require notarisation and/or legalisation?

A Power of Attorney is not required for trade mark to be processed. However, for litigation purposes, notarisation and legalisation is indeed needed.

2.15 How is priority claimed?

It is required to provide in the application form the country of origin, application number, the date of filing and the exact description of goods and services used in the priority application. It is no longer necessary to file a certified copy of the priority application.

2.16 Does your jurisdiction recognise Collective or Certification marks?

Collective marks are indeed recognised by the IPL currently in force. However, Certification marks are not.

3 Absolute Grounds for Refusal

3.1 What are the absolute grounds for refusal of registration?

Pursuant to article 90 of the IPL, the following cannot be registered as trade marks:

  • Animated or changing denominations, figures or threedimensional forms.
  • Technical or commonly used names of products or services, or generic designations thereof.
  • Three-dimensional forms which are part of the public domain or have become part of common use, as well as those which lack distinctiveness, are the ordinary shape of products or are the shape imposed by their nature or industrial function.
  • Descriptive marks or indicative words used in trade to designate the species, quality, quantity, composition, end use, value, place of origin of the product or production era.
  • Isolated letters, digits or colours, unless combined or accompanied with other elements, such as symbols, designs or denominations, which provide them with sufficient distinctive character.
  • Geographic denominations (proper or common), maps and nouns and adjectives, when they indicate the origin of products or services and may lead to confusion or error as to their origin.
  • Names of population centres or places that are characterised by the manufacture of certain products, to protect such products.
  • Names, figures or three-dimensional forms that could deceive the public or lead to error, understood as those which constitute false indications about the nature, components or qualities of the products or services they purport to protect.

3.2 What are the ways to overcome an absolute grounds objection?

If the examiners consider that the trade mark incurs any of the absolute grounds for prohibition established in the IPL, an official action is issued, granting the trade mark applicant a two-month term that can be automatically extended for a further two months, to provide legal arguments against the alleged absolute grounds for refusal and to try to overcome them.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

If an application is refused by the IMPI based on absolute grounds, the applicant may choose between three different venues to appeal: a review recourse before the IMPI; an appeal before the Federal Court for Administrative Affairs (FCAA); or an amparo suit before a federal district court.

3.4 What is the route of appeal?

I. A review recourse before the IMPI

This is a remedy that must be filed before the IMPI within 15 working days from the day after the date of notification of the refusal. The review recourse is resolved by the administrative superior of the person who issued the denial at the IMPI. A review recourse is only advisable when the denial is founded on a clear mistake of the IMPI (e.g., a denial based on an alleged lack of a particular document when the document was in fact filed).

If the denial is based on any of the absolute/relative grounds for refusal established in article 90 of the IPL, a review recourse is not advisable, as it is likely that the superior court will confirm the refusal resolution. The applicant may file an appeal before the FCAA against a decision issued by the IMPI under a review recourse.

II. An appeal before the FCAA

The appeal before the FCAA can be filed within 45 working days following the date of the notification of the refusal or the decision of the review recourse. This appeal is decided by an administrative entity (it is not a court of law) that decides whether the IMPI correctly applied the IPL.

Appeals are resolved by three administrative magistrates in public hearings, where the parties may not make oral arguments but can only hear the discussion of the case between the magistrates. All arguments must be submitted in writing during the prosecution of the appeal.

In this appeal, the applicant or appellant must prove that the IMPI's considerations to refuse the application did not comply with the provisions of the IPL. The IMPI will be the counterparty, trying to prove the legality of its refusal.

The losing party can make a final appeal before a federal circuit court against the decision of the FCAA. This appeal must be filed within 10 working days of the day following the notification of the decision to the losing party.

The resolution of the circuit court is final. If the IMPI loses the appeal, it must comply with the resolution within a short period.

III. An amparo suit before a federal district court

Due to recent Supreme Court jurisprudence, amparo suits are now available as a further venue to appeal refused applications. They can be filed within 15 working days of the day following the notification of the refusal. The amparo is a procedural institution, which makes it highly technical.

One advantage of these proceedings is that, due to the requirements of procedural law, cases are decided in a very short timeframe, ranging from two to five months, with stays being studied very quickly (within two days of the filing of a suit). Another advantage is the higher level of preparation of officers and judges at the courts concerning IP affairs.

The main disadvantage is that under the amparo law, the judge is bound to first find a clear error in the decision under review and is not entitled to review the case de novo; thus, many of the decisions in amparo suits are remanded to the IMPI for further consideration, with certain guidelines that can be concerned mainly with the due process of law, although in some cases the judge actually gives guidance on the merits of the case.

Any decisions of the district court can be appealed before a circuit court.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.