HOW TO SEARCH AND TRADEMARK A NAME IN MEXICO

Are you willing to get and register your trademark in Mexico? This article will guide you with the most common questions about trademark registration in Mexico.

Mexico, with a population of 126 million people, is a big market for products and services. The Mexican economy is complementary to the USA, due to their free trade agreements imports and exports are very large and extended to many sectors as automobile, electronics to clothing.

To trademark your name in Mexico, as in the rest of Latin America, you will need to file and obtain a local trademark registration. The process looks longer and more complicated than you first can imagine, but we will try to make it as simple as possible.

Mexican trademark law requires that you have used the trademark before filing or that you have an intention to use it. In both cases, you have to offer some form of evidence.

There is no legal obligation to get a trademark in Mexico to sell or promote your products or services. But the fact that you use it will create minimal rights in Mexico. This means that in the case somebody is copying your trademark, there is little you can do about it. For this reason, serious players have to register their trademarks in Mexico. To register your brand, you will have to file a local application before the Mexican Trademark Office.

Having a trademark in another country does not create any rights in Mexico. To have a right in Mexico, you have two options:

  1. File a Mexican trademark application
  2. File an international trademark, Madrid protocol application, and select Mexico as a designated country. 

Before offering your products or services, you want to perform a trademark search in Mexico. The reason is simple; you do not want to use a previously registered trademark in Mexico to avoid a trademark infringement lawsuit.

We also advise you to perform a search before filing a trademark application to avoid unnecessaries conflicts or delay during the process-

The Mexican trademark office -IMPI- is one of the most efficient trademark offices in the region. Their website has a complete office online database called MARCANET. Trademark online searches in Mexico are only available in Spanish.

You can also make trademark searches in Mexico using the European Union Intellectual Property Office -EUIPO- Trademark Database (TM VIEW) that consolidates various national databases and allows searches in different languages.  

This trademark search will perform an exact match search and can also include other trademarks that contain the same search terms. A good practice is to search also for:

  • Similar trademarks 
  • Obvious variations as plurals or gender
  • Translations.
  • Obvious misspelled words
  • Sound-alike works
  • Other accepted spellings

You should also be familiar with the international trademark classification of goods and services, AKA Nice Classification. This classification is important because trademarks are registered in a specific class, but they are also relations between the classes.  

You should look closer to trademarks registered in Mexico that are registered in the same class or classes as your brand, but also in classes that could be connected by consumers.

Once you have a list of similar brands, you have to study one by one to see if there is a risk of confusion, and they cover similar goods or services. 

If you have a question about your search or want a legal opinion, our Mexican trademark attorneys can help.

The cost will include the official fees plus the professional fees of the Mexican trademark lawyers handling your case. We have developed a tool that can give you the exact cost of your trademark in Mexico in a few clicks.

No, Mexico does not accept multiclass applications. You have to make a separate application for each international class.

Foreign applicants should appoint a trademark attorney admitted to practice in Mexico. We can help you with that.

The trademark application must contain:
-the applicant’s complete name, address, nationality;
-description of the product(s) or service(s) covered by trademark;
-a digital sample of the logo (if any);
-the date of first use of the brand in Mexico (if any); you should have evidence of this first use because it can be challenged later.
-co-ownership agreement in case of several applicants.

In case you claim a priority, we will need the country of origin, registration date, and application number.

Once the office verifies that the application complies with all the requirements, it will order the publication of the trademark request.

In Mexico, the trademark office does not require the need to file a Power of Attorney. Instead, our lawyer has to make an oath asserting that he has the authority to represent you. In our office, we request a POA with a simple signature just to keep in the record in case it will be required later. No notarization or apostille is needed.

For many years Mexico was an exception to the globally accepted opposition system. But this has changed starting in September 2016.
About ten days after filing, the application will be published. Third parties have one month to file an opposition.

A smooth application procedure can take between 8 to 10 months. We call a smooth application one with no opposition or office actions.

Office actions can come at two different moments. The first, just after the application, and they will be based on formalities or classifications. The second, after the end of the opposition period, and they will be based on absolute or relative grounds of refusal.

Applicants will have two months (automatically extended if necessary) to reply to the office action. In case you do not file a proper answer to the office action, the trademark will be deemed abandoned.

Trademarks in Mexico are valid for ten years from the application date, and they can renew as many times as needed. You will need to file a trademark renewal and pay a renewal fee six months before or six months after the expiration.

Yes, you have to file a declaration of use three months after the third granting anniversary. Then every ten years, at the moment to renew your registration, you have to declare that you are using the trademark.

A registered trademark can be challenged for different reasons:

  • Lack of use: if you have not used your trademark for three years, it can be canceled.
  • The trademark was incorrectly granted.
  • The application included false information
  • The registration was obtained in bad faith
  • The registration was obtained by a person with a relationship with the rightful owner of the trademark in another country.

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what our clients say

Managing applications in different countries it is a lot of work. With BR I reduce the work load and I can spend more time on more important matters. I am overall more productive

Adam, IP in house counsel

Dealing with foreign associates could be very frustrating. BR is always available to reply my emails and phone calls

Jennifer, Trademark paralegal

Their simplified Power of Attorney is really a deal maker.  My boss simply signed electronically a POA and BR took care of the rest.  It is much simpler than working with other firms.

Tracy , Patent Administrator

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