Trademarks System in Mexico

Friday, May 10, 2013

TRADEMARK SYSTEM IN MEXICO

The trademark system in Mexico accepts only single class applications and the Mexican PTO uses the 10th Edition of the Nice Classification. It is therefore needed to file one trademark application per class needed.

Mexico’s trademark system does not have opposition proceedings and therefore the Mexican PTO makes an ex-officio examination about the earlier marks which may be similar to the trademark application.

The proceeding to obtain a trademark application may take approximately 6-8 months since the filing date in case no objections are raised by the Mexican PTO.

In case one objection is raised, the Trademark and Patent Office may take up 4-6 months to decide on the matter.

Conducting a clearance search before filing the application is highly recommended in order to increase the chances to have a successful application. Despite the fact that the results do not offer a 100% of accuracy, the search will disclose all the earlier rights that may be an obstacle for the application.

Should the mark includes a particular logo, it is highly advisable to make a search of logos to reduce any similarity with an earlier right. This search may take approximately 7 days.

A good strategy and local advise is highly recommended if earlier rights are found. That will definitely increase the possibilities of having a successful application.

Should a mark consist of both logo/words, it is highly recommended to apply for both, word mark and figurative mark.

RECENT INTERNATIONAL CHANGES

Mexico recently adopted the Madrid Protocol and the rules concerning the Madrid system are now in use. However, attention must be paid to all applications filed using this system. The maximum period to obtain a response is up to 18 months. Therefore, time is an issue to be considered and especially because the lack of opposition system may delay the application in case an objection to the trademark application is raised by the Mexican PTO.

A clearance search previous to the filing of a trademark application is recommended because that may reduce times and risks.

PERIOD OF USE

The period for non use of a trademark application is 3 years. After 3 years of registration, the owner may be forced to submit proof of use of his trademark registrations. Failing to do so, may result in the loss of rights for the total or part of the rights conferred by the registration.

REQUIREMENTS TO FILE A TRADEMARK APPLICATION

We need the following to file a trademark application:

Complete name of your client

Address of the company

Address of the company in Mexico (if applicable)

Date of start of use of the trademark (if applicable)

Logo if applicable (jpg format)

Confirmation of the list of goods or services in English 10th version of the Nice Classification

POWER OF ATTORNEY

No power of attorney is required in Mexico to represent a client for filing and prosecution, however, it is recommended that we receive the PoA at least by e-mail duly signed by the legal representative of the client and also signed by two witnesses with original of the copy of the passport of the signatories. We will ask you to fill in the information concerning the notary power of attorney given to the legal representative of the client in the power of attorney.

ACTIONS TO FOLLOW AGAINST A SIMILAR TRADEMARK REGISTRATION TO AN EARLIER RIGHT

In case a trademark registration is found to be similar to an existing earlier right of another party, there is a 3 years term to file action of invalidity. This action may be brought to the Mexican PTO before the term of 3 years after the date of granting the registration. The grounds of the action may be those of similarity of goods/services and/or similarity of signs.