Mexico has joined the Madrid Protocol since February 19, 2013; therefore, Countries members of this system can designate Mexico in the international trademark application. Alternatively, it is possible to file a Mexican trademark application to the Mexican Patent and Trademark Office.
Which trademarks can be registered in Mexico
According to article 88 of the Industrial Property Law
“a trademark is understood as being any visible sign that distinguishes products or services of the same type from others of the same type or category on the market”.
Some amendments to the Mexican Industrial Property Law entered into force on August 10, 2018 according to the amendments, the Mexican trademark system will be available for sounds, scents and holographic signs.
Trademark filing and registration of a trademark in Mexico
Whoever wishes to obtain the registration of a trademark, must file an application for each class in which it was requested. Also Mexico adopts Nice Classification.
New rules require right-holders to submit an official form declaring the actual and effective use of their respective trademarks. Such obligation will take place in two different times:
- upon submitting a request for renewal of a trademark and
- within the three months following from the date on which the registration reaches three years from the granting date.
According to article 122 of the Industrial Property Law:
“A substantive examination shall be made to determine whether the trademark is eligible for registration under this Law. A substantive examination shall be made to determine whether the trademark is eligible for registration. If the application or documentation submitted does not comply with legal or regulatory requirements, if there is any impediment to the registration of the trademark or if there is prior art, the Institute shall inform the applicant accordingly in writing, allowing him a period of two months within which to rectify the errors or omissions that he has committed and to make whatever statement best serves his interests in relation to the impediments and prior art cited. If the applicant does not respond within the time allowed, his application shall be considered abandoned”.
Whether Mexican Trademark Office rejects registration of trademark, it shall inform the applicant in writing, stating legal grounds of its decision. Once the application has been processed and the legal and regulatory requirements have been complied with, the title shall be issued.
On August 30, 2016 the system of opposition to trademarks entered into force in Mexico. All trademark applications are published (no publication existed before that date) in order to allow third parties to file an opposition to the registration of the mark.
Anyone can oppose the registration of a trademark application on the basis of a prohibition under the Trademark Law of Mexico, without necessarily being the holder of a trademark application or registration and without the need to have rights on the opposed application.
The deadline for opposition a trademark is one month from the date of publication of the trademark application.
The filing of the opposition does not suspend the process of the registration of the trademark: the arguments submitted during the opposition are examined by the Mexican Trademark Office in order to take a decision on the registration of the proposed mark.
Validity and duration of a trademark in Mexico
The registration of a trademark shall have a term of 10 years, starting from the filing date and can be renewed indefinitely, each time for ten years.
Trademark registration is subject to cancellation in the event of non-use for three consecutive years.
Eva Troiani law firm is at your disposal for further information on how to register your trademark in Mexico.
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