Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 12 months, if no objections or oppositions arise.
If I register my trademark in Mexico, do I have protection in other territories?
The entire territory of Mexico is the limitation.
Do I need to sign a Power of Attorney?
A power of attorney is not a requirement for filing an application but it is useful in cases where:
- the applicant needs to respond to any official request
- the applicant must change an attorney
- the applicant wants to withdraw the application
Are there any benefits from a pre-filing use of the trademark?
There is no benefit for using the mark before filing the application. However, in cases where two applicants filed for application at the same time and they are applying for identical marks, the applicant that can provide proof of earlier date of use will be granted the right for registration.
Will there be problems in case I don’t use my trademark after registration?
Yes. Third-parties especially business competitors may request the trademark authorities to cancel your registration on the ground of non-use.
In addition, for marks registered after August 10, 2018, the Trademark Office in Mexico requires to file a declaration of use 3 years from the registration date. Furthermore, all renewal requests must include a declaration of use.
What are the types of trademark that can be registered in Mexico?
Applicants are allowed to register marks/signs such as: words, slogans, names, colours, 3-dimensional shapes, trade dress and devices. Special requirements are applicable for each registrable mark.
What are the phases of application after a trademark has been filed in Mexico?
The application will first be examined by the trademark authorities. The trademark must meet all requirements for a registrable trademark. Compliance of all requirements will result to the mark’s registration and then details will be published for the public to see.
What type of trademark is not registrable?
Applicants are prohibited to register immoral marks, signs that contradict public order, names/flags/symbols of nations/states/international organization, generic name and non-distinguishable marks.
Does Mexico use the "Nice Classification" system?
Yes. Mexico uses the Nice Classification system. If the trademark will be used for multiple classes of goods, it is necessary to get an individual application for each class.
Is there any possibility to claim priority in Mexico?
Yes. If the applicant first filed the application in a country that is a member of the Paris Convention, that filing date can be considered as the filing date in Mexico. The application date must not exceed 6 months since the first filing.
What do I need to do to satisfy the use requirement?
You must use the trademark within 3 years from the date it was registered and, if your mark was registered after August 10, 2018, you must also file a declaration of use 3 years from the registration date.
More so, 3 consecutive years of not using the mark is also a ground for cancelled registration. To satisfy the requirements, the mark must be commercially used and the commerce or trade must happen in the jurisdiction of Mexico.
Finally, to renew your trademark registration, you must file a declaration of use along with the renewal application.
Once my trademark has been registered, for how many years will be valid?
It is valid for 10 years starting from the date of application. Note that the computation will NOT start from the date of registration.
What will be the renewal date of my trademark?
Count 10 years from the date you filed the application.
Is it legal to use my trademark even if it is not yet registered?
It is illegal to use an unregistered trademark for commerce and trade.
Does having a registered trademark in Mexico give me any right?
Mexican law mandates owners to register their trademarks in order establish their rights. The first person to file for application is entitled for registration. Ownership cannot be relied upon use since common-law rights are not available.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
Yes. The law mandates applicants to use the trademark before applying for registration. They are required to submit a documentation of when the mark was first use. Otherwise, they have to prove that the mark is not yet in use and that they have intention to use it.
Can a Trademark Application be opposed?
Yes. Opposition was made available since September 1, 2016.
Who can contest my trademark registration?
Interested parties (contact us for more information).
Is it possible to cancel a registration?
Yes. Your registered mark is vulnerable to getting cancelled:
- if it violates propriety rights,
- if there is breach of contract,
- if mark is proven non-registrable (refer to non-registrable marks), if mark is proven to violate Article 6bis, Article 6ter and Article 6septies and Article 8 of the Paris Convention,
- if mark is misleading, deceptive, immoral, etc.
Are there any rights established by having a registered trademark?
Registration of trademark will allow the owner to enjoy some rights namely:
- Exclusive commercial use of the mark
- Oppose applications that have likeness with their mark
- Request an action to cancel applications that are identical to their mark
- Request an action to confiscate counterfeit products
- Receive damages due to infringement
- Protect their mark against infringement cases
How long is the opposition period?
Trademark applications are published in the Industrial Property Gazette for opposition purposes within 10 business days from filing. Third parties can file an opposition within one month from publication.
Is Mexico a member of the Madrid System?
Yes, Mexico is one of the signatories of the Madrid Protocol.
Do I need to present periodic statement of use?
If your mark was registered after August 10, 2018, you must file a declaration of use 3 years from the date the registration was granted. In addition, all marks must present a declaration of use when renewing the registration, 10 years from the registration date.
When should I renew my trademark?
Count 10 years from the date you renewed your mark.
What will be the renewal date of my trademark?
Count 10 years from the date you filed the application.
Is there any documentation that should be presented when renewing a trademark?
You must file a declaration of use along with the renewal application.
If my trademark expires, do I have a grace period?
When the trademark has expired, you can still renew it within 6 months starting from the expiration date.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.