The Mexico trademark must be registered with the Mexican Institute of Industrial Property (Instituto Mexicano de Propiedad Industrial, or IMPI). Since the legal system of Mexico is civil law (i.e., code-based), there is no common law as exists in the jurisprudence of the countries such as the United States and Canada. Therefore in Mexico trademark registration is essential for ownership of a trademark in Mexico. Besides, the registration of the mark in other countries does not confer legal rights to the mark in Mexico.
Characteristics of Mexico Trademark Application
Mexico Trademark applications can be filed either in hard copy at the IMPI or electronically, a new serial number will be generated for every new application. Then, the IMPI scans the application official form along with the documents submitted with it, which means that your application becomes public knowledge and can be easily found on the electronic database of the IMPI just like you found other trademarks while performing the trademark availability search.
It is worth mentioning that there are no intent-to-use applications since they are received under good faith presumption. This means that unless you expressly state you have not used your mark, it is presumed that your mark is in commerce (it is not compulsory to prove the actual use of the mark). Moreover, there are no multi-class applications, if you wish to protect your trademark for several products or services a single application is required for each independent class of goods or services.
Mexico Trademark Examination Procedure
Once the Mexico trademark application is submitted, the IMPI makes a formal trademark examination which is focused on checking compliance with all formal requirements provided by law (goods and/or services classification check, payment of the official fees, etc.).
If a formal requirement is not met, the IMPI will issue an Office Action requiring the applicant to amend the application within four months (non-extendable). If the amendment is not made within such period the application shall be considered abandoned and therefore, you will not get trademark registration.
If there is still missing a formal requirement, a new Office Action will be issued and the applicant must respond within the same period of time.
After the formal trademark examination, the substantive trademark examination takes place. That is to say that your application is assigned to a trademark examiner within the IMPI, who will review the application and will determine whether it is eligible for registration or not. Some of the reasons for refusal of registration are: descriptiveness of the trademark or likelihood of confusion between another or other trademarks already granted. The trademark applicant is given a period of time of four months (non-extendable) to respond to an Office Action issued by the trademark examiner.
After submitting your response, the examiner will consider your arguments and they will decide to grant registration or not. If the examiner’s decision is not favorable to you, then you will have the option to appeal to the Federal Court of Fiscal and Administrative Justice (TFJFA).
If the substantive trademark examination phase is successful and you overcome any objections raised by the trademark examiner then your mark is entitled to federal registration. The IMPI will issue a certificate of trademark registration and your mark will be published in the Official Gazette.
It is worth mentioning that there are no opposition procedures in the Mexican trademark system. If an interested party considers that its rights are affected by the registration of a trademark, such party has the option to request the cancellation of the trademark registration, the deadline for requesting the cancellation depends on the basis on which this legal action is sought.
How long does it take to get a trademark certificate?
The estimated time for getting a mark registered in Mexico may vary, for example; if a trademark application was duly submitted and there are no Office Actions in the formal examination and neither the existence of any objections raised by the examiner, the applicant will usually get a trademark certificate in approximately six months. Otherwise, it may take one year and a half or even more depending on the circumstances of each case.
Mexico Trademark Protection
A registered Mexico trademark has a protection term of ten (10) years, which may be renewed an unlimited number of times for succeeding ten-year terms. The initial term begins on the application date in Mexico.
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