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Other application requirements
The application must be filed along with proof that the appropriate fee has been paid. This fee can either be paid using IMPI’s online payment system, or at a bank where IMPI maintains an account.
A claim of priority must be made in the application. A certified copy of the foreign application (and a Spanish translation, if appropriate) must be filed within 3 months of the Mexican filing date.
If there are two or more applicants, an agreement between the applicants regarding use, licensing and assignment of the mark must be filed with the application.
If the application is filed by an attorney, the attorney must state under oath that she has been granted an appropriate power of attorney. It is no longer necessary to file a copy of the power of attorney with the application, or to record it in IMPI’s General Register of Powers.
The examination process
IMPI examines trademark applications in two phases. First, there is a formal examination to determine whether the applicant has correctly filled out the application form, paid the required fee, etc. Next, there is a substantive examination to determine whether the mark is entitled to registration.
If the examiner issues a refusal at either stage, the applicant has two months to respond. This period may be extended for another two months upon payment of a fee.
If the application is refused on the basis of a prior registration for a confusingly similar mark, the applicant may request that the proceedings be suspended and petition for cancellation of the prior registration.
There is no formal opposition process in Mexico, although informal oppositions are sometimes considered. Once IMPI completes its examination of the application, the certificate of registration issues, and notice of the grant of registration is published in the Official Gazette.
Absolute grounds for refusal
Relative grounds for refusall
A mark may not be registered if:
Generally speaking, goods or services are considered “similar” if they belong to the same class. However, IMPI recognizes that some classes contain goods and services that are not related (e.g. sunglasses and computer software in Class 9). IMPI also recognizes that goods and services in different classes may be related, although as a practical matter, examiners usually search only the class covered by the application.
The law contains special provisions regarding refusals based on prior marks that are famous or well-known, which are discussed in the next section.