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

The following may not be registered as marks:

• Marks that are not visually perceptible (e.g. sounds and scents).

• Animated or changing names, figures or shapes.

• Isolated letters or numerals.

• Single colors.

• Generic terms.

• Descriptive terms. (This is an absolute prohibition, since secondary meaning is not recognized under Mexican law).

• Three dimensional shapes that are functional or lack originality.

• The translation into another language or arbitrarily changed spelling of a term that would otherwise not be entitled to registration.

• Flags, coats of arms, official signs or seals of control, medals or prizes awarded at officially recognized exhibitions, etc.

• Geographic terms or maps that may cause confusion or error regarding the origin of the goods.

• Names of places known for the manufacture of certain goods (unless the place is privately owned and the owner has consented to registration).

• Names, pseudonyms, signatures and portraits of living or deceased persons, without the permission of the person in question, or if she is deceased, her estate..

• Titles of intellectual or artistic works, periodicals or publications, names of fictional or symbolic characters, or the stage names of individuals or performing groups, without the permission of the individual or group.

• Marks likely to deceive or mislead the public as to the nature, components or qualities of the goods or services.

A mark may not be registered if:

• It is confusingly similar to a prior registered mark, trade name or advertising slogan, or a mark, name or slogan that is the subject of a prior pending application; and

• The goods or services covered by the application are identical or similar to the goods or services identified in the prior application or registration.

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.