Trademarks and Related Rights

Trademarks, service marks, collective marks, advertising slogans and trade names are protected under the Industrial Property Law of 1991.  In addition, Mexico is a party to various international treaties, including the Paris Convention, the North American Free Trade Agreement (NAFTA) and the Trade-related aspects of Intellectual Property Rights (TRIPS), which are generally considered to be self-enforcing, and may create rights in addition to those conferred by domestic law.

Definitions

• A mark is any visible sign that distinguishes products or services from others of the same type or category on the market.

• A collective mark is used by a legally incorporated association or group of producers, manufacturers, traders or providers of services to distinguish the products or services of their members on the market from those of third parties.o.

• An advertising slogan is a sentence or statement that makes a commercial, industrial or service establishment or business, product or service known to the public so that it may be distinguished from others of the same kind.

• A trade name is the name of an industrial, commercial or service firm or establishment.

Types of marks

For registration purposes, marks are categorized as:

• Nominative - a word or series of words.

• Non-nominative - designs, logos or other distinctive visual elements.

• Three-dimensional forms - containers, packaging, or product configurations.

• Mixed - combinations of any of the above.

Benefits of registration

The owner of a trademark or service mark registration has the exclusive right to use the mark in Mexico for the goods or services identified in the registration.  The registrant may not be sued for infringement until and unless the registration is cancelled.  Trademark registration also confers the right to take legal action against infringers and counterfeiters.

The rights conferred by a collective mark or advertising slogan registration are essentially the same as those conferred by a trademark or service mark registration.

Trade names are protected in the geographic area where they are used, without the need for registration.  However, registration creates a presumption that the trade name has been adopted and is being used in good faith.

Ownership and Priority

In general, trademark rights are created through registration rather than use.

However:

• A registration is not effective against a person who has, in good faith, continuously used an identical or similar mark in Mexico for identical or similar goods or services, since before the registrant’s filing date or claimed date of first use.

• A prior user may, within 3 years of the registration date, apply to register the mark and petition for cancellation of the registration.  The cancellation claim may be based on prior continuous use, either in Mexico or any other country.

Application requirements

Trademark applications are filed with the Mexican Institute of Industrial Property (IMPI). The application must include:

• The name, nationality and address of the applicant.

• The distinctive sign that constitutes the mark.

• Whether the mark is nominative, non-nominative, three-dimensional or mixed.

• An image of the mark, if it contains a non-verbal element.  In the case of a three-dimensional mark, the images should show the design from the front, back, top and bottom.

• If the mark has been used in Mexico, the date of first use.  If the application does not identify a date of first use, it will be presumed that the mark has not been used.  Once the application is filed, the date of first use may not be amended.

• The products or services for which registration is sought, and their classification.

• Any disclaimed elements (for example, the ® symbol, or indications of size or weight on a label).

• The location of the establishment or business associated with the mark (i.e. the place where the goods are produced or the services are rendered).

Identification of goods or services

IMPI follows the 9th Edition of the International Classification of Goods and Services.

An application may only cover goods or services in a single class.  However, registrations issued under the former Mexican classification system have been reclassified, and often cover goods in multiple international classes.

Although the law is silent and there is no binding case law on point, a registration that recites a class heading is generally assumed to cover all goods or services in the class.  To be safe, the applicant may list any goods of specific interest after the class heading.

Identifications of goods or services taken from the 9th Edition of the Nice Classification Manual will be accepted by IMPI.  Identifications not taken from the manual may be subject to negotiation with the examiner.

The identification may contain inclusive terms such as “including” or “especially.”