Malaysia Hotline: +603-2141 8908
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.
Contact
us
If you have further queries, please contact Tannet
24 hours Malaysia hotline：603-21418908;
24 hours Hong Kong hotline：852-27837818;
24 hours Hong Kong hotline：86-755- 36990589;
Email: mytannet@gmail.com
TANNET GROUP: http://www.tannet-group.net, http://en.tannet.com.my