How to File a Trademark with the Mexican National Institute of Industrial Property – IMPI
Introduction
In the bustling economic landscape of Mexico, with a population of over 130 million (UN data, 2021), safeguarding your brand identity through trademark registration is crucial. The country's robust economy has seen remarkable growth in several areas, including the services, construction, and automotive sectors (www.imf.org). In 2022, Mexico's GDP reached approx. US$1.41 trillion (www.statista.com), and its per capita gross national income rose to $10,410, classifying it as an upper-middle-income nation according to World Bank standards. In the same year, Mexico ranked 9th globally for foreign direct investment, attracting over US$30 billion, and remains the United States' second-largest trading partner.
This favorable business landscape has resulted in the creation of an average of 35,000 new businesses each month, particularly in sectors like financial services, health, education, IT, and telecommunications.
In our detailed 5-step guide below, we'll walk you through the application process and address a range of inquiries, including: What specific information is required for a Mexico Trademark application? How is the process distinct for Local and Foreign entities? What are the benefits of hiring a local representative or trademark attorney? And, in the event of a Mexican trademark application being opposed, what are your recourse options?
We'll also at several key insights as well as highlight recent changes to the law, helping you to avoid potential pitfalls and ensuring that your trademark registration process is as straightforward and expedite as possible.
Why Should you File a Trademark in Mexico?
Globalization has imparted valuable lessons to business professionals, particularly regarding the safeguarding of intellectual property and the considerable risk that a company may try to target your brand or intellectual property (IP). Recent decades have unveiled a disheartening reality for many: the registration of their trademarks in foreign markets by third parties, who may either actively use the trademarks or employ a strategy called "trademark squatting, with the intention of later benefiting from the original owner's need to regain control. This situation highlights the necessity of taking proactive measures to protect and oversee trademarks in the Mexican market, especially given that having a trademark in another country doesn't automatically grant you rights in Mexico.
Recent Changes to the Trademark Registration Process in Mexico
To address the concerns above, Mexico implemented significant changes to its intellectual property laws on November 5, 2020. One notable change mandates a Declaration of Use (DAU) for trademark registrations within three months of the third anniversary of registration. This is aimed at promoting active use and clearing unused trademarks from the registry. If a trademark remains inactive for three years from registration or longer, it may face cancellation. To confirm trademark usage, a declaration of use application is required in the third year from the application date and subsequently in the tenth year during the first renewal. The changes also include extending the renewal deadline, specifying a physical address for first use claims, and eliminating the need for a power of attorney when filing a trademark application.
Trademark Registration in Mexico: An Overview
In Mexico, there's no legal obligation to obtain a trademark to sell or promote your products or services. However, if you want to secure your rights in Mexico, you have two options: filing a Mexican trademark application or an international trademark application through the Madrid Protocol, designating Mexico as the target country (For further information on the latter, please go to www.wipo.int).
The trademark registration process in Mexico involves 5 key steps, beginning with access to the application form via IMPI's efficient online system. The steps include conducting a comprehensive search, fee submission, and progress tracking. It typically takes 8 to 10 months to process an application. Trademarks are protected territorially and temporarily, with a 10-year safeguard that can be renewed indefinitely upon payment of renewal fees.
Requirements for Locals
The process for registering a trademark in Mexico directly is straightforward. You can complete the trademark application electronically using a Payment and Electronic Services Portal (PASE) account provided by the Mexican government for online submissions.
You will need to provide the following information:
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Applicant's Contact Information, including business name, personal ID code (CURP), country of incorporation, phone number, office address, and email.
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Specify the class of products/services using the International (Nice) Classification of Goods and Services.
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Offer a comprehensive description of the brand, covering its origin, design, general characteristics, and business activities.
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The date you started using the brand commercially.
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Submit the logo in JPG format if registering a logo along with your brand.
Requirements for Foreigners
Foreign nationals can register trademarks in Mexico, but they must be represented by a local intellectual property attorney to submit their trademark application. In most instances, a Power of Attorney is not a mandatory requirement. Instead, the Mexican Institute of Industrial Property will acknowledge the agent's authority to submit the trademark application on the applicant's behalf if the agent affirms, under oath, that they possess this authorization. However, you should be aware that while not mandatory for submission, the agent should still maintain a copy of the Power of Attorney in their records (for more information, see the section below on the Benefits of Hiring a Local Representative).
Completing the Trademark Application Form: Our 5-Step Guide
STEP 1: Conducting a Thorough Trademark Search
Under Mexico's Industrial Property Law, a trademark encompasses any visually perceptible sign that can be secured for exclusive use. Its primary function is to differentiate products or services from similar offerings in the market. When creating a trademark in Mexico, there are several elements available, such as:
Conducting thorough trademark searches is essential to avoid trademark infringement lawsuits and any other potentially time-consuming and unnecessary conflicts. It also ensures your trademark's uniqueness and availability. To get a better grasp of the trademark landscape in your brand's industry, there are several options at your disposal: Mexico has a free online database called MARCia for this purpose, although these searches are only available in Spanish and are not necessarily up to date.
Alternatively, you can use the European Union Intellectual Property Office (EUIPO) Trademark Database (TM VIEW), which consolidates national databases and allows for searches in various languages.
At Nominus.com, we also offer a search engine in English, where you can search according to Trademark names (similarities and equivalents) class and status (active or non-active).
To ensure a smooth and efficient application process with minimal delays, we strongly advise seeking the expertise of legal professionals who can perform a comprehensive trademark search in Mexico. This way, you can be confident that your trademark application is well-informed and thoroughly researched.
Understanding Similar Trademarks and Nice Classification
Mexico employs a single-class system, meaning that multiple-class applications are not accepted. Trademarks in Mexico fall under the Nice Classification system, which categorizes goods and services into classes for trademark registration purposes. Although trademarks are registered in specific classes, there are also relationships between these classes, based on how consumers perceive them. Once you identify similar classes, you must assess each one to determine if there's a risk of confusion and if they cover similar goods or services. Every Nice class requires a separate trademark application with a separate fee for each. Accurate descriptions of goods and services are crucial for successful registration.
STEP 2: Submitting Your Trademark Application
Create an IMPI Account
You'll first need to create an account on the IMPI electronic services platform (PASE) and obtain an electronic signature and Unique Population Registry Code (CURP). The CURP is an alphanumeric code consisting of 18 characters that identifies each citizen and legal resident in Mexico. It is issued by the Mexican government and used nationwide for administrative, legal, and tax purposes.
On the PASE login page, there are 3 options to be able to access the PASE platform:
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If you already have an account, you can access in the normal way by entering your email and password combination (B).
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Click on "registrarse" under "Nuevo usuario" (C) if you don't yet have a PASS account you be asked to verify your CURP before completing your personal details.
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If you have been registered on a prior version of PASE, you can click on "Entrar" under "Usuario Pase anterior" (C) and follow the indications to migrate your account.
Once you have accessed IMPI's platform, you can begin the application process, which involved 3 stages: Filling out the application form (Llena tu solicitud), Payment (Pago) and Sign and Submit (Firma y envía). It is a relatively straightforward process providing you have previously conducted a thorough search and are sure you have selected the right classification/s for your products or services.
Click on Trademark Online (Marca en Linea).
Click on New Request (Nueva Solicitud de Marca).
A popup window will appear asking to if you have read and accept the privacy notice. Click Aceptar. You are now ready to fill out the form which consists of 6 sections.
Section 1) What would you like to register? (¿Qué quieres registrar?)
In the first section, you can then decide the type of request you would like to register: Trademark, Collective Trademark etc.
Once you have selected the request type, then choose how your mark is constituted: word (palabra), design (diseño) or both:
Write the name of the trademark you wish to register (A), any elements that do not require protection (B) : these include general descriptors or indicators of product aspects such as species, quality, quantity, composition, purpose, value, place of origin, production date, or common characteristics, e.g., "Made in Mexico," "Expiration Date," "Nutritional Information," "Net Content: 200g.". Leave this blank if it does not apply. If your brand name includes any word(s) in another language, you should indicate their meaning in Spanish (C).
Once the section is complete, click on Next (Siguiente).
Section 2) Description of Products or Services? (Descripción de productos o servicios)
Please note that, in this section you cannot select products or services from different classes within a single application. In other words, you must fill out a separate application for each class. If you have any uncertainties about how to classify your products or services correctly, you can refer to the WIPO's international Product or Service Classification tool available here. There are 3 options for selecting the class:
Once you have selected the class, click on Next (Siguiente to continue).
Section 3) Trademark owner details (Datos del dueño de la marca)
In the next section, you will need to add some details about the brand owner. Select Physical Person (Persona Física) or Company (Empresa).
In the section dropdown that appears, fill out the requested information. Add an electronic email address and click on Next (Siguiente) to continue. You may be asked to provide further details, such as an address if the person is not registered with IMPI.
Section 4) Have you used your trademark? (¿Has usado de marca?)
In the next section, you are asked whether you have used the trademark previously. If yes, you should provide the date from which it has been used. If your trademark already has a commercial location, select Yes, or No if it doesn't.
Click on Next (Siguiente) to continue.
Section 5) Details of person signing the request (Datos de quien firma la solicitud)
Complete the boxes with the required information for whoever is to sign the Application Request. Then click on Next (Siguiente).
Section 6) Have you filed in another country? (¿Has presentado tu marca en otro país?)
Finally, you will be asked whether you have filed your trademark in another country. Selecting yes, for example, if you are claiming right of priority over an application filed previously outside Mexico will display further boxes asking for information such as when you filed, the file number and country.
Please note that before clicking on FInalize Request (Finalizar captura), you should be sure to add any additional documents that may be required in Anexos. These are optional in most cases (IMPI's online platform will indicate any mandatory documents) but will not be given another chance to do so in and will need to start a new application. This includes Priority documents, any legalized documents with an apostille or Power or Attorney if required, although you should consult with a legal expert to see whether these documents are necessary. For example, under existing regulations, the trademark office does not require the need to file a Power of Attorney.
Make sure you have included any relevant additional documentation by clicking first on Anexos. Upload from your desktop (Buscar Anexo). Confirm they are true, original, and duly stamped if necessary, and select Save Additional Files (Guardar archivos anexos).
Click on Preview (Vista Preview) to review your application. Once you are satisfied that each of the 6 sections has been completed, click on Finalize Request (Finalizar Solicitud). Remember that once you click on this button, you will no longer be able to modify the application request.
Payment
You will then be taken to the second Payment stage (Pago). You can review the costs applied before clicking on Continue (continuar). There will also be a notice in blue advising you that a 10% discount has been applied for using the online service. Click on "continuar" to make the initial payment.
Invoice or receipt
In the next payment section, select whether you would like a regular public receipt (Factura genérica) or a company invoice (if you click on "aqui" you will be asked to complete the invoice details).
Check the box if you agree with the invoice details that are to be submitted and click on Add to cart (Agregar al carrito) to proceed with the payment.
Review the details and make a note of the Request number (Folio FEPS) and click on Pay (Pagar).
You will be presented with several payment options. Please note that you must have an account with one of the PASE-associated banks to make a payment. To make the payment you will be redirected to your bank. Please follow the indications.
Once you have completed the payment, Click on Sign request (Firmar Solicitud) and the options for signing the request will be displayed.
Signing your application
To sign using the CURP, you will be asked to enter the password you used to enter your PASE account.
You can then download your Electronic Invoice (XML format) and Proof of Payment (PDF format).
And that's it! You can now check the status of your requests by clicking on My requests (Mis solcitudes, then Solicitudes en Preparación.
If there are no issues, your trademark is published for one month. During this time, third parties can submit comments or opposition. If no opposition is raised, your trademark is registered.
Trademark Registration and Renewal
STEP 3: Evaluation Period
The evaluation process can take approximately 8-10 months while your application is reviewed in 2 stages: a formal examination to ensure compliance with formalities or classifications and an in-depth examination to determine issues such as distinctiveness. IMPI may contact the applicant during this time to request further information or issue an office action comprising formal requirements.
Publication in the Gazette
After receiving your application, IMPI is required to publish it in the Industrial Property Gazette's Information System (SIGA) within 10 days. This allows third parties to review and potentially provide feedback on your application. You have a month to address any comments received.
Reviewing Third-Party Comments
If there are any similarities between your pending application and existing registered trademarks, or if third parties provide feedback on your application following its SIGA publication, the IMPI may request modifications. Failure to provide a suitable response to the office action will result in the trademark being considered abandoned.
STEP 4: Monitoring Your Application
To stay updated on the progress of the application, be careful to actively monitor both the national trademark database and the relevant Gazettes.
STEP 5: Application Approval
Once any necessary modifications have been made, and your application has been confirmed to be unique, IMPI will grant approval for your trademark. Once registered, your trademark is valid for 10 years from the date of application submission and can be renewed for subsequent 10-year periods. Renewal can be initiated 6 months before the expiration date.
Upon approval of the application and subsequent registration of the trademark, it is then featured in the Approved Trademarks Gazette. The trademark certificate is digitally delivered to the email address provided by the agent.
"Use it or Lose it": After Your Trademark is Registered
In Mexico, trademarks must be used to remain valid. A declaration of "real and effective" use (DAU) must be filed in the 3rd year from the date of application together with the renewal application and a description of specific goods or services where the mark is used. This process takes 3 months and must be completed within the same timeframe.
If a trademark hasn't been used within 3 years from registration or for more than 3 years, it may be subject to cancellation.
Benefits of Hiring a Local Representative
In this complex regulatory landscape, it's essential to have an experienced team guiding you through the trademark registration process in Mexico. Whether you're a local business protecting your brand or a foreign company looking to enter this dynamic market, compliance with Mexico's intellectual property laws staying on top of current regulations and practices is crucial to safeguarding your intellectual property effectively.
For a streamlined trademark registration experience in Mexico, Nominus.com offers a reliable solution. Our team of local attorneys can manage the entire process for you, including conducting trademark searches, filing applications, and monitoring progress. We also offer a comprehensive Feasibility report for your trademark. To explore further, please visit our webpage on Mexico Trademark Registration.
Conclusion
While there's no legal obligation to trademark in Mexico, protecting your brand transcends mere strategy, given the regulatory intricacies and fierce competition in the market. Understanding the process and enlisting professional help can make the journey smoother. Trademark registration serves as a vital shield for your brand and sets the stage for success in this dynamic economy.
The information presented here is not intended as formal guidance or advice. For your specific circumstances, it's important to consult with a qualified professional. This information is provided solely for informational purposes and may not encompass all relevant laws, regulations, and best practices, which, given the ever-changing regulatory environment in Mexico may become outdated or subject to change.