Companies now are focusing on expanding their businesses universally. Registration of Trademark is one aspect that should be fulfilled to achieve greater success. The future is so inconstant that we cannot predict what the future may bring. To overcome future uncertainties, a registered trademark is an asset that significantly adds value to your business. Companies work hard to build their brand and want to protect it. Registering your trademark secures all your hard work and ensures that your customers will be able to distinguish you from your competitors. There is a huge difference between registered and unregistered trademark. The article below will familiarize you with the importance and benefits of registering Trademarks in Mexico.
Importance and Benefits of registering Trademarks in Mexico
1. Particular rights
A trademark registration gives the proprietor the right to exclusive use of the mark in respect of the goods or services. Probably the most significant reason for the registration of a trademark is the powerful remedies against unauthorized use. Trademark registration allows the owner to sue for infringement and to obtain very important remedies such as ban, control up infringing articles and damages.
A registered trademark can be hypothecated as security. In other words, a registered trademark can be pledged as security to secure loan facilities much the same way as immovable property can be bonded.
3. Intangible Asset
A very important reason for registration is to create the trademark as an identifiable intangible asset in the legal judgment.
A common law trademark connects to the goodwill and, generally speaking, the goodwill is not separable from the business in its completeness. This has the realistic effect that an unregistered trademark will never have a separate and independent existence. It will always form part of the goodwill and it will always be connected to the business. The only way in which to obtain a common law trademark is to acquire the business as a going concern. On the contrary, Trademark registration can be transferred like any other asset owned by a person or a company.
A registered trademark can be licensed. A trademark license can be recorded on the trademark register, giving the licensee rights to institute legal proceedings in the event of trademark infringement.
A registered trademark can be transferred. The transfer is not possible for a common law trademark, which can only be transferred with the business.
Trademark registration prevents other traders from using trademarks that are similar or identical to theirs in relation to goods and services. By using the ® symbol, owners put others on notice of their rights. Furthermore, a registered mark can be noticed when others search the official register before choosing to commence using a particular name.
7. Use in proceedings
Trademark registration is prima facie evidence of the validity of the registration and the rights conveyed by registration. In legal proceedings relating to a registered trademark the fact that a person is registered as the owner of the trademark is proof of the validity of the original registration of the trademark unless the contrary is confirmed.
8. The right to use the symbol ® or “R” or word registered
Once the trademarks are registered the symbol ® or “R” or word “Registered” may be used for the goods and services listed in the registration.
9. Foreign territories
A registered mark can be used as a basis to achieve registration in any foreign countries, facilitating the protection of the brand worldwide as the business develops.
10. Counterfeit Goods Act of 1997
A registered trademark empowers customs authorities at South African ports of entries to prevent the importation of counterfeit foreign goods. The Counterfeit Goods Act 1997 (CGA) allows the owner of an intellectual property benefit or anybody with an interest in goods owning or representing such rights, to take civil or criminal action against a person or company that is involved in counterfeiting.
The CGA explains intellectual property as a registered trademark or a well-known trademark or copyright.
Read More: Benefits of Trademark
An overview to trademarks in Mexico
1. Owners of a Trademark
According to the recent amendments to the Mexican Law of Industrial Property, which became effective from 10 August 2018, trademark registrations may be applied for individuals and companies devoted to the manufacturing and sales of products or to the rendering of services.
2. Scope of Trademarks in Mexico
In Mexico, trademark protection is obtained once the trademark is registered before the Mexican Institute of Industrial Property. According to the earlier amendment, any sign that can be represented in a clear and precise manner and is capable of distinguishing products and services from others in the market may be registered as a mark. From 10 August 2018, Mexican law grants protection for non-traditional marks, specifically for sounds, scents, motions, colors, and product design or configurations.
Read More: Types of Trademarks
3. Common-Law Trademarks in Mexico
While the use of a mark may grant the individual or company certain rights, such as grounds for a cancellation action upon prior use or the possibility of opposing use performed in Mexico as an exception against an infringement action, exclusive rights over a trademark are only obtained by means of registration. Moreover, a mark may only be enforced against alleged infringers if it is already registered before the Mexican Institute of Industrial Property. The only exception to this general rule corresponds to scandalous and famous marks, which may be enforced without registration, provided that suitable and sufficient evidence demonstrating such privileged status is displayed.
4. The timeframe of Trademarks in Mexico
The Mexican Institute of Industrial Property has established the terms in which a response in a trademark registration procedure should be issued, the examiner may issue his or her decisions in a file within a four to six-month period from the date on which the last petition is filed. Thus, an application that does not encounter any requirement or grounds for refusal may become registered within a four to six-month period. Nowadays, the electronic filing of trademark applications is available. This type of application may in some cases be assessed in a more speedy manner. Regarding designations deriving from an International Registration, the authority has up to 18 months to issue its first decision or letter.
Generally, the examiners are taking advantage of this extended deadline. If the application is objected by the authority, then delays in obtaining the registration may be expected. Once a response to an official action has filed the examiner in charge will have another four to six months to issue a decision.
5. Documents for Trademark Registration
To file an application, the following documents for trademark are required:
- The word or phrase to be registered and a black and white or color specimen in the case of designed or combined marks, if dealing with applications for sounds, scents, and product configurations, in light of the recent amendments, the applicant should provide a description of the mark to be protected.
- The law does not require the exhibition of the document upon which priority is claimed. Thus in order to claim priority rights, it is only necessary to name the country of the base application with its filing date and the serial number, if possible.
- The products or services to be covered.
- The date of the first use of the trademark in Mexico, or confirmation that the mark has not been used.
- The domicile or registered business address of the applicant.
- The factory address or location of the main commercial establishment (street, number, city, and country). This information is only required when an applicant claims a date of first use in Mexico.
- A simplified power of attorney, which document must be executed by an authorized officer of the applicant company and by two witnesses.
The accuracy of documents of trademarks is very important since Mexican law provides that a trademark registration may be canceled if it is granted upon false statements contained in the application form.
6. Classification of Goods and Services
Mexico follows the International Trademark Classification of Goods and Services under the Nice Agreement, 11th edition. However, it is very important to verify the drafting of goods and services, as examiners tend to be very strict concerning goods not expressly contained in the classification as described.
According to the Mexican Law of Industrial Property, multi-class filing is not available. There are in total 45 classes of Trademark.
Another issue to be taken into account is that according to the current criterion of the Trademarks Office, claiming the class heading of a class does not mean that all goods and services relating to said class are protected. Thus detailed descriptions are preferred.
Read More: Nice Classification
7. Examination Procedure of Trademark Application
The Process of Trademark Registration is subject to two different types of examination. Initially, a formal examination is performed to make sure that all the required information has been provided and that the goods or services to be covered are property drafted and classified.
In a second examination, the officer determines whether the proposed mark is subject to being registered, either due to its nature (absolute grounds) or in light of pre-existing registered marks or pending applications (relative grounds).
Applicants have a two-month term, counted from the date in which they are served with the official action, to respond to any objection, it being possible to obtain two extensions of one month each time.
8. Use of Trademarks in Mexico
When filing the application, the applicant must state whether the mark has been used. The amended law expressly states that the date of first use should refer to Mexican territory, something that had been argued back and forth for several years. Now that the amendments have come into effect the controversy will disappear as the date to be claimed as of first use should refer to Mexico. The other issue is that if no mention is made of the date of first use, the law provided it should be presumed that the mark has not been used. Now, with the commented amendment it is stated that if no date of first use is claimed, then it will be understood that the mark has not been used.
In Mexico, trademarks may be registered even if their use has not commenced. The ownership of a foreign registration does not grant any right of priority on behalf of the applicant except that provided by the Paris Convention. Mexican law did not expressly provide the time in which the use of a mark must begin. However, in light of the amendments that came into effect from 10 August 2018, registrants will have to file a declaration of use within the three-month period following the third anniversary of the corresponding registration. If the said declaration is not filed, the registration will automatically lapse.
9. Duration and Maintenance of Trademarks in Mexico
In Mexico, trademark registration is in full force and effect for a 10-year period. It is possible to file a subsequent trademark renewal for 10 years. The 10 years are counted from the filing date of the corresponding application.
10. Third-Party Opposition of Trademarks in Mexico
According to Mexican law, applications will be published for opposition within a 10 working day period, counted from its filing date. The deadline to file an opposition is one month following the date of publication. This deadline is non-extendable. The Mexican Institute of Industrial Property publishes listings detailing the trademark applications that have been opposed. Upon the publication, an applicant has a one-month term in order to file its response to settle the grounds of opposition. Since 10 August 2018, once the term granted to the applicant to respond to the opposition expires, the authority will grant two days for both parties to submit their final allegations.
Once the registration process is concluded the examiner will determine whether the application should be granted into registration, in which case the certificate of registration will be issued.
In conclusion, we can say that registered Trademarks has numerous benefits over unregistered Trademarks. In Mexico, Trademark Registration grants the owner the particular rights over their Trademarks and several other rights.
Competitive entities who want to register their trademarks can call us freely at +91 8750008585 and our experts will assist you in all the possible ways. For more queries, visit our website Trademark Cart. We provide a free Trademark Search to check the availability of the mark.