Examination Of The Trademark Application In Mexico

National

• Article 28 of the Constitution provides the basis for the main IP(Intellectual Property) laws.
• The Industrial Property Law is the authority governing trademarks and other industrial property rights in Mexico. The law comprises seven parts out of which the fourth is titled Trademarks, Commercial Slogans, and Trade Names.

International

Mexico is a signatory to the following relevant international treaties and conventions:

• The Paris Convention for protecting Intellectual Property.
• The Protocol Relating to the Madrid Agreement concerning the International Trademarks Registration.
• The Agreement of the World Trade Organisation on Trade-Related Aspects of IP Rights.
• The North American Free Trade Agreement.
• The International Trademark Classification of Goods and Services under the Nice Agreement for Trademark registration.
• The Free Trade Agreement between the Republic of Colombia, the Republic of Venezuela, and the United Mexican States.

Unregistered marks

Protection

• According to the Industrial Property Law, the right to use a trademark is achieved through a trademark registration granted by the Mexican Institute of Industrial Property (IMPI).
• However, the Industrial Property Law also provides an exception to the registration system. It is that the user of an unregistered mark may enjoy certain rights against a third party that has a similar or identical trademark registration.
• However, such rights are limited to specific circumstances, provided by Articles 92(1) and 151(2).

Read More: Trademark Protection

Requirements

• Under Article 92, a trademark registration cannot be enforced against a third party if they use the same or a similar trademark in the national territory in good faith and does not confuse.
• The third-party has the right to apply for the trademark within 3 years of the date on which the registration was made. In this case, the third party has to request and get a declaration of invalidity of the earlier registration.

Article 151 states that a trademark registration shall be considered null when:

• The mark is identical or so similar as to confuse with another mark that has been used in the country or abroad before the filing date of the trademark registration.

In this case, it will be necessary to provide evidence of uninterrupted and prior use of the trademark in the country or abroad.

Any cancellation action based on prior and uninterrupted use of a mark must be initiated within three years of publication of that trademark’s registration in the Trademark Gazette.

Registered marks

Ownership

• Under Article 87 of the Industrial Property Law any industrialists, merchants, or service providers may use trademarks in industry, in commerce, or in the services they render.
• While the right to their particular use is obtained through trademark registration.
• Consequently, any person or entity is entitled to apply for trademark registration before IMPI.

Representation

• As per current law, it is no longer compulsory to submit a power of attorney along with a trademark application.
• Since IMPI will recognize the competence of the representative signing such application through a declaration under oath contained in the application form.
• However, a valid power of attorney must exist and be granted before the date on which the application is filed. Otherwise, the declaration under oath may be considered invalid.
• Nevertheless, for most other actions including any disputable proceedings during the examination of the trademark application, a certified or legalized power of attorney must be granted.

Scope of protection

As per Article 89 of the Industrial Property Law, different types of trademarks can be protected, provided that they are:

• Sufficiently distinctive
• Capable of distinguishing the goods or services to which they apply or are intended to apply from other signs registered in the same class.

Conversely, Article 90 provides a list of non-registrable signs which include:

• Descriptive marks or indicative words used in trade to designate the quality, quantity, composition, end-use, value, or place of origin of the goods or time of production.
• Isolated letters, digits, or colors, unless combined with or accompanied by other elements (eg, symbols, designs, or denominations) which provide them with sufficient distinctive character.
• Geographic denominations, proper or common nouns, and adjectives, that may lead to confusion as to the origin of goods or services.

Read More: Registered Trademark

The procedure of Trademark Registration in Mexico

The Process of Trademark Registration is as follows:

Previous searches

• Before filing a trademark application, and availability a Trademark search is highly recommended.
• Trademark Search is carried out as per Classes of Trademark.
• Searches concerning wordmarks can be carried out online.
• Whereas searches for device marks are performed online directly by the applicant or its representative. They can be performed by IMPI based on written or online request. The results of which will be available within 2-3 weeks.

Examination of the Trademark Application

The examination procedure begins with the filing of a trademark application form with IMPI. In general terms, a trademark application must comprise:

• The name, domicile, and nationality of the applicant.
• The domicile of the commercial or industrial establishment.
• The exact goods or services to be protected. The multi-class applications are not allowed and broad or indefinite specifications are no longer acceptable.
• The priority number and filing date, if applicable. The priority document needs no longer to be filed.

Once the application has been filed, IMPI allocates an application number along with the corresponding filing date and the examination process begins. The process comprises three phases:

• Review of the application and publication for opposition purposes in the Official Gazette.
• Formal examination, during which the examiner determines whether the application fulfills formal requirements. Most official actions issued during the formal examination relate to the classification of goods or services.
• Substantive examination, during which the examiner determines whether the mark applied for has already been registered by another party and whether the mark complies with absolute and relative grounds.

The formal and substantive examinations together take four to six months. The applicant can check the Trademark Application Status online. Any objection raised during formal or substantive examination will be notified to the applicant. It will be notified through an office action, granting a two-month term to provide legal arguments against the objections. The period can be automatically extended by a further two months. An application with no objections may be granted within six months of filing. Otherwise, the examination procedure may take as long as 12 to 18 months.

Read More: Documents for Trademark

The opposition of Trademark Registration

Recent amendments to the Industrial Property Law establish an opposition system in Mexico. The relevant order was published in the Official Gazette on June 1, 2016, and entered into force on August 30, 2016.

Following the new opposition system, on receipt of the trademark application, IMPI must:

• Publish the application in the Industrial Property Gazette within 10 business days.
• Examine the application to verify compliance with the legal and regulatory requirements.

The opposition procedure is set out in the new Article 120 of the Industrial Property Law, which follows certain rules:

• The action can be filed by any individual or entity.
• The action can be filed against any trademark application on any of the grounds set out in Articles 4 (contrary to the public or moral order or good conduct, or in violation of the law) and 90 (grounds for denial of registration).
• The non-extendable period for disputing a registration is one month following the application’s publication date.
• The opposition must be filed in writing and accompanied by suitable documentation and a receipt verifying payment of the corresponding fees. The evidence to be submitted depends on the grounds of opposition.
• The filing of an opposition action does not:
  1. Suspend the application process
  2. Grant any status to the opposing party as an interested third party
  3. Automatically determine the outcome of the in-depth examination carried out by the IMPI.
• The examiner may review the written opposition and the applicant statements during the substantive examination.

Registration

• The registration certificate grants the owner the exclusive right to use such mark for 10 years. It begins from the filing date and registration can be renewed for subsequent 10-year periods.
• To maintain Trademark rights, the registrant must use the mark in Mexico within three years of the date of the grant.
• Otherwise, the registration will be canceled based on non-use.
• Although no proof of use is required. The trademark renewal application includes a declaration under oath that the mark has been used according to the Industrial Property Law. Although no proof of use is required. The trademark renewal application includes a declaration under oath that the mark has been used according to the Industrial Property Law.

Removal of Trademark Registration

Removing a trademark registration is possible using any of the following mechanisms:

• Voluntary cancellation – If the right holder no longer wants to maintain its right, it is possible to request a cancellation before IMPI.
• Lapse – If the registration is not renewed at the end of any 10 years or within the six-month grace period post-registration, the registration will automatically lapse.
• Cancellation due to non-use – Under Articles 130 and 152(1) of the Industrial Property Law, if a trademark is not used for three consecutive years about the products or services for which it was registered, registration will be subject to cancellation for non-use. Therefore, any third party with legal standing may file a cancellation action, requiring the defendant to prove the use of the challenged trademark for at least some time during the three years preceding the date on which the cancellation action was filed.
• Cancellation action due to loss of distinctiveness – When the owner of trademark registration has caused its distinctive sign to become a generic name for one or more of the products or services for which it is registered or has taken no action against its distinctive sign becoming generic, the trademark will lose its distinctive character and be subject to cancellation.
• Invalidation action – Article 151 of the Industrial Property Law sets out the grounds under which a mark registration may be declared invalid, including when registration was granted based on incorrect information in the application. Any third party with legal standing may file an invalidation action within five years of the date of publication of the challenged trademark in the Trademark Gazette.

Enforcement of Trademark in Mexico

• When the infringer is using an identical or confusingly similar trademark for identical or similar goods or services to those covered by the registration, a trademark infringement action may be filed before IMPI.
• Due to the administrative nature of IMPI, the consequences for trademark infringement follow a common procedure, which begins when the litigator files the formal claim. Once IMPI has admitted the claim, it will serve notice to the defendant, which must then file its reply. IMPI will then issue a decision on the merits of the case.
• As IMPI is not a court of law, it can order infringers only to stop the infringement and pay fine. Once IMPI’s declaration of infringement has become final, it is possible to file an action before a civil court to claim damages of at least 40% of the commercial value of the infringing products.
• Lastly, the Industrial Property Law provides the possibility to request temporary injunctions before filing or during the prosecution of infringement claims against infringers.
• When the infringer uses a mark that is identical to a mark that has been registered for the same goods or services, the rights holder may file a criminal action with the Attorney General’s Office, which will start an investigation to ascertain the existence of counterfeiting. If counterfeiting is confirmed, the Attorney General’s Office will defer the matter to a federal district judge. Criminal penalties vary from between two and 10 years’ imprisonment and fines of up to $100,000.

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