Trademarks

The Federal Law for the Protection of Industrial Property. Mexico is also a signatory to agreements such as:

• the Paris Convention for the Protection of Industrial Property;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.

The exclusive right of use of a trademark arises from registration. Use of an unregistered trademark may create certain rights. Notably, prior use can be asserted both as a defence against a trademark infringement claim and as a basis to challenge the validity of a trademark registration.

• The Regulations to the Industrial Property Law; and
• Other ordinances issued by the Mexican Institute of Industrial Property (IMPI), such as:
• • the agreement that establishes the rules for the presentation of applications to IMPI; and
  • the agreement that establishes the guidelines for the attention of requests, petitions and promotions presented in accordance with the Protocol concerning the Madrid Agreement on the International Registration of Trademarks before IMPI.

Under Mexican law, a trademark is any sign that:

• is perceptible through the senses;
• is capable of being represented in such a way that the clear and precise object of protection can be determined; and
• distinguishes the products or services from other products or services of the same species or class.

Trademarks may be:

• traditional trademarks (eg, word marks, design marks or word and design marks); or
• non-traditional trademarks (eg, 3D marks; sound marks; scent marks; holograms; combination of colours; or a plurality of operative elements and image elements –including, size, design, colour, layout, labelling, packaging, decoration and any other elements – that, combined, differentiates the products or services on the market (ie, trade dress)); and
• composite trademarks (ie, a combination of all of the above).

While the law does not expressly mention motion, multimedia and position trademarks, the definition of a ‘trademark’ is sufficiently broad to encompass these kinds of trademarks. In fact, the Mexican Institute of the Industrial Property (IMPI) has already granted registrations for these kinds of trademarks.

A trademark must:

• be perceptible by the senses;
• be capable of being represented in a way that allows the clear and precise object of protection to be identified; and
• differentiate products or services from others of the same species or class in the market.

• Technical terms or generic or commonly used terms;
• Three-dimensional forms that are in the public domain or are commonly used;
• Holograms in the public domain;
• Descriptive terms;
• Isolated letters, numbers or colours;
• Translations or transliterations of non-registrable words;
• Signs which reproduce or imitate the flags, shields or emblems of countries, states, municipalities or similar; names, acronyms, symbols, emblems, names of programmes or projects or any other signs of international instruments, organisations, governmental or non-governmental bodies, whether national, foreign or international, or any other officially recognised organisation, without authorisation;
• Signs that reproduce or imitate official control and guarantee signs or seals adopted by a state, without authorisation from the competent authority; or coins, banknotes, commemorative instruments or any official national or foreign means of payment, without authorisation;
• Signs that reproduce or imitate the officially recognised names, signs or graphic representation of decorations, medals or other prizes obtained in exhibitions, fairs, congresses, events cultural or sports, without authorisation;
• Identical or confusingly similar signs to other registered marks, famous or well-known marks or trade names, without authorisation;
• Appellations of origin or geographical indications;
• Signs which are identical or confusingly similar to geographic zones when they indicate the provenance of the goods or services and may mislead the consumer;
• Names, surnames or pseudonyms of well-known or famous persons, and voices, images or signatures of persons, without authorisation;
• Titles, characters or any other elements of a work, without authorisation;
• Signs that might mislead the consumer with respect to the source, nature, composition or characteristics of the goods or services;
• Signs that imitate or reproduce plant varieties; and
• Bad-faith signs.

A trademark that is not sufficiently distinctive may be registered if the owner can prove that the trademark has acquired distinctiveness among the consumer public through repeated use.

The Mexican Institute of Industrial Property (IMPI).

IMPI charges:

• application fees;
• fees for responding to office actions;
• fees for filing complementary responses; and
• fees for filing missing information.

Fees are also payable for filing oppositions.

Yes.

The applicant must identify the specific goods or services. The headings of classes are not allowed unless the goods or services under those headings are listed in the class. Protecting the heading does not mean that the full class is protected. Protection over unused products or services will be lost once three years have elapsed from registration.

The law does not require prior use in order to file an application. Mexican law does not recognise intent to use applications; however, it is understood that the applicant has a bona fide intention to use the mark, since it must declare use by the third year following registration.

Yes, the examiner will conduct a substantive examination and may cite prior marks ex officio.

IMPI conducts formal and substantive (relative) examinations.

Yes, as mentioned in question 2.3, deceptive trademarks cannot be registered and neither can trademarks that are filed in bad faith. Copyrighted works and their titles and elements can also block a trademark from registration if the examiner considers they are sufficiently well known for a risk of confusion or association to arise. Marks may also be refused on account of public order in rare cases, such as where the trademark refers to unlawful activities such as drug trafficking.

No.

A third party can oppose the registration of a mark within one month of publication of the application. The application is published 10 days after the filing date.

No, use of a trademark is not required to file or register a trademark.

Around four to five months.

Ten days. The formal and substantial examinations are conducted after the opposition period ends. That is why publication is almost immediately after filing.

There are two options:

• a motion for review to have the hierarchical superior of the examiner review the case; or
• an appeal before the Federal Court of Administrative Justice.

The motion for review is typically a quicker remedy, normally taking around six to eight months. However, it is rarely effective, as most of the time the superiors will just confirm the examiner’s decision. An appeal is often the more effective remedy, though it can take longer to obtain a decision – typically around a year or two.

Attempting a motion for review will not prevent the applicant from appealing later on if the outcome of the motion is unfavourable. However, this does not work the other way around: a motion for review cannot be attempted after an appeal has been filed.

For a motion for review, the motion must be filed with the Mexican Institute of Industrial Property (IMPI) within 15 business days of notification of the challenged decision. The superior of the examiner will then decide the case.

For an appeal, a complaint must be filed with the Federal Court of Administrative Justice within 30 days of the notice of the challenged decision. The court will give notice to IMPI, which will then have 30 business days to submit its reply to the appeal and send over the official file of the matter. Third parties with an interest adverse to the plaintiff, such as the owners of prior trademarks, must be informed of the appeal by the court and will also be given 30 days to reply to the appeal. Hearings are rare; in most cases, what will happen after all the parties have replied is that a deadline to file closing arguments will be set and then the court will decide the case. The court has three specialised judges who only hear IP cases; one of them will be commissioned with supervising the procedure and drafting a decision, which will then be voted on by all three judges and, if approved by a majority will become the decision of the case.

If the decision concludes that IMPI did not adequately solve the case, it will order that it issue a new decision as per the guidelines provided by the court within four months.

A party affected by a decision of the Federal Court of Administrative Justice may seek its review by the federal circuit courts through a constitutional remedy called ‘amparo’ which must be filed with the Federal Court of Administrative Justice within 15 business days. Once this remedy is filed, the Federal Court of Administrative Justice will send it along with the official file to the federal circuit courts; one of these courts, each of which is composed of three judges, will be randomly selected to solve the case. This court will give notice to the other parties so that they may file their arguments if they wish to do so. The federal circuit court will then appoint one of its three judges to decide the case, which will then be voted on by all three judges. If approved by a majority, this will become the final decision of the case.

In extraordinary cases involving a direct interpretation of the Constitution, it may be possible to seek further review by the Supreme Court, although this is very rare.

IMPI is permitted to try to challenge decisions of the Federal Court of Administrative Justice in cases that either involve fines of a certain amount or are extraordinary in both reasoning and consequences. Thus, most attempts by IMPI to challenge such decisions are simply dismissed unless a fine is involved.

Yes. Within roughly 10 business days of filing, before examination, an application will be published in the Industrial Property Gazette and any third party with an interest contrary to grant of the application will be allowed to oppose it.

Anyone with an interest adverse to its grant. This does not necessarily mean that a prior application or registration is required – just an adverse interest that can be justified by a prohibition on registration of the mark foreseen by the law. For instance, a copyright holder may validly oppose the registration of a trademark that is confusingly similar to the title of its copyrighted work, even if it does not hold a trademark registration for it.

One month from publication of the application; this timeframe cannot be extended.

The Mexican Institute of Industrial Property (IMPI), and more specifically the examiner in charge of the opposed application.

Once the opposition has been filed, the examiner will inform the applicant and mention any other reason for not granting registration that the examiner may want to raise ex officio through an office action. The applicant will then have approximately four months to reply to the office action; otherwise, the application will be abandoned. If the office action is answered, the examiner will give both the applicant and the opponent a deadline to file their closing arguments and the examiner will take around four months to decide the case.

For the opponent, it is typically difficult to challenge the outcome: there is no clear procedural route to do so and appeals are normally dismissed. However, the opponent can still attempt to bring nullity or cancellation proceedings against the registration.

The applicant may challenge the outcome as per question 4.1.

In principle, none. The owner of an unregistered mark has no exclusivity over it. However, trademarks that are so widely known as to be considered well known or famous can be afforded some protection. For example, a famous unregistered trademark may block an application for a confusingly similar mark. That said, proving that a trademark falls within such categories can be difficult and requires a substantial amount of evidence.

Prior use of an unregistered mark can be a valid basis to challenge the registration of a confusingly similar mark or even a defence against infringement; but use by itself does not confer exclusivity.

The trademark owner has enforceable exclusivity over the mark in respect to the goods or services covered by the registration and may claim infringement against third parties that use confusingly similar or identical marks for identical or similar goods or services. Registration also provides a solid basis to oppose the applications of third parties or even cancel the registrations of others for identical or confusingly similar marks.

No, there is no separate registry. However, descriptive marks can be registered if they acquire distinctive character through use, in which case the registration certificate will mention that the mark was registered for this reason.

There are four potential remedies:

• The Mexican Institute of Industrial Property (IMPI) can:
• • hear infringement cases;
  • impose preliminary or permanent injunctions;
  • seize infringing goods;
  • impose severe fines; and
  • even award damages at the conclusion of the proceeding.
• The procedure is not quick, but it is nonetheless typically less complex and expensive than the other remedies.
• A civil action for damages can be attempted before a civil court, either federal or local. The courts can also impose injunctions. However, civil proceedings can be temporarily suspended if the defendant challenges the validity of the allegedly infringed registrations before IMPI, which can be a significant cause of delay.
• The forgery of trademarks, as well as the production, storage, transport, import, distribution or sale of products bearing forged trademarks, is a federal crime punishable by up to 10 years’ imprisonment and a fine. Thus, the owner of a trademark registration can also file a criminal complaint with a federal prosecutor.
• Arbitration can be attempted if the parties so agree.

The same as those outlined in question 7.1. Moreover, it is also a form of trademark infringement under Mexican law to take action that could mislead consumers into believing that there is a relationship with the goods, services or establishments of a third party and this prohibition could be invoked against dilution.

Yes, the Federal Law for the Protection of Industrial Property also forbids:

• undertaking acts of unfair competition;
• disparaging a competitor;
• falsely claiming that a trademark is registered;
• using a registered trademark as part of a company name, domain name or trade name;
• altering trademarked products; and
• copying a trade dress.

Depending on the particularities of the case, these additional prohibitions can be invoked in addition to trademark infringement.

A complaint can be filed with IMPI. The infringer will be served with process and given 10 days to reply. The plaintiff will then have three days to submit additional arguments. Both parties will be given 10 days to file their closing arguments and a decision will then be issued. The proceeding takes around two years at first instance. If a preliminary injunction is sought, it will be notified to the infringer along with the complaint, and the infringer can submit arguments against it and try to lift it by posting a bond. If the injunction subsists, it can become permanent in the final decision. Products seized under a preliminary injunction can be destroyed upon the conclusion of the case.

For a civil case, the exact procedure varies on whether the case is filed with a federal court or a state court. Typically, after filing the complaint, the defendant will be served with process and allowed to answer the complaint. This is followed by an evidentiary stage in which the parties can present their evidence; closing arguments will then be filed and a decision of the case will be issued. Certain defences and procedural matters may interrupt the case. Most notably, if the infringer challenges the validity of the infringed registrations before IMPI, a civil case will be stayed pending the outcome.

For criminal cases, a criminal complaint must be filed with a public prosecutor. This will initiate an investigation stage before the public prosecutor, which may then move on to an initial hearing and supplemental investigation supervised by a judge, a pre-trial stage and finally a trial.

Mexico recognises prior use as a valid defence against trademark infringement. If use of an identical or confusingly similar mark is shown to have been made in Mexico in an uninterrupted manner and for identical or similar products or services, the registration will have no effect against the infringer. Because prior use is also a valid basis for challenging a trademark registration, this defence will often be supplemented by a counterclaim attacking the validity of the registration.

Moreover, in Mexico, trademark rights are normally exhausted upon the first sale. Therefore, once a trademarked product has lawfully entered into commerce, it may be advertised, distributed, purchased or used and such actions do not constitute trademark infringement. This can extend to authentic trademarked products that are imported into Mexico.

For the proceeding before IMPI, the remedies outlined in question 4 are available. For civil and criminal matters, appeals before a higher court are also usually available.

Registration of a trademark is valid for 10 years, counted from the date of registration.

However, a declaration of use must be filed by the third year following registration in order to preserve the validity of the trademark; otherwise, the trademark will automatically lapse.

The subsequent terms of renewal are 10 years each, counted from the date of registration.

The owner of a trademark may request renewal of a trademark registration in the six months prior to its expiration or the six months thereafter.

The validity of registrations granted before 5 November 2020 is counted from the filing date.

A declaration of use should be filed along with the renewal, indicating the goods and services for which the trademark has actually been used. Non-declared goods will automatically be deleted from the protection. No evidence of use need be filed.

• A non-use cancellation action (partial cancellations are also allowed);
• An invalidation action based on prior use in Mexico or abroad;
• An invalidation action based on a false date of first use;
• An invalidation action based on bad faith;
• An invalidation action on the grounds that the registration was granted against a prohibition of the law;
• An invalidation action on the grounds that the registration was granted by error, mistake or incorrect appreciation of the Mexican Institute of Industrial Property (IMPI) because of the existence of an identical or confusingly similar trademark that has already been registered;
• An invalidation action against a registration obtained without authorisation by the agent, legal representative or distributor of the owner of a trademark registered abroad; or
• A cancellation action for allowing the trademark to become a generic term used for the products or services covered by the registration.

IMPI may cancel a registration where it has become generic or in any other circumstance which is in the interests of the Mexican Federation. However, this is extremely rare.

A complaint should be filed with IMPI. The owner will be served with process and given one month to reply. The plaintiff then has three days to submit additional arguments to the response to the complaint. Both parties will be given 10 days to file their closing arguments and a decision will then be issued. The proceeding takes around two years at first instance.

The remedies outlined in question 4 are available.

No, there are no requirements on quality control for a licence in Mexico. The regulations provide only that the licence:

• must be signed by the licensor and the licensee; and
• must specify their domiciles and nationality.

The original or a certified copy of the licence agreement document should be filed with the Mexican Institute of Industrial Property (IMPI); and if the document is in a language other than Spanish, a translation will be necessary. It is suggested that the licence should specify whether it is exclusive or non-exclusive and its duration. Licensees can defend the trademark unless there the agreement provides otherwise.

While this is recommended, it is not mandatory to record a licence with IMPI.

No, the licensor will not lose rights in its trademark.

Foreign trademarks cannot normally be enforced unless they are also registered in Mexico; although an exception may apply for trademarks that are so widely known in Mexico as to be considered well known or famous. Other than in this truly exceptional case, enforceable exclusivity over a trademark is obtained only through registration.

Mexico is a party to the Madrid Protocol and trademarks can be registered in Mexico under the protocol, although the process is substantially slower than that for a national application.