The reform of August 10 2018 to the Mexican Industrial Property Law substantially changed the Mexican trademark landscape. Among the most relevant changes brought by this legislative reform, particularly the acceptance on behalf of the Mexican Institute of Industrial Property (IMPI) of non-conventional trademark applications – such as smell and sound trademarks – positions México today at the forefront of innovation. Read More here.
More and more applicants are indicating Mexico as a designated state for their International Registrations under the Madrid Protocol. However, while the process may be harmonized under WIPO, there are still quirks in the Mexican system that applicants should know about. This is what you need to know:
- You will only receive notification of your first provisional refusal via WIPO. Except for
provisional refusals, as of August 2018 all notifications are made via the official gazette as per the IP Law amendments. This means that any notification from Mexican IP Institute (IMPI), such as third party oppositions, will only by issued via gazette.
- Your trademark registration may be granted, but you must use it to keep it. The amended IP Law indicates that a Declaration of Use must be submitted three years after grant. If not, the registration will automatically be abandoned. Evidence is not required, but a sworn declaration must be submitted.
- Interested in enforcement? Make sure Mexican Customs knows how to contact you. Mexican Customs actively reviews incoming shipments and occasionally flags those that they deem suspicious. Customs then contacts the registered representative to determine whether these goods should be detained or can be forwarded to their final address.
- Don’t let your trademark be attacked, without the opportunity to fight back. Third parties routinely target registered trademarks that are cited against their new applications. Court notifications are typically delivered in person to the Mexican address of the registered representative. Failure to have a representative on file can result in a trademark registration being lost because no one submitted a defense.
All the above issues can be solved by recording an Attorney on File at the IMPI. Therefore, if you are thinking about designating Mexico for your International Registration, be sure to let your Mexican Attorney know so that we can help you keep an eye on your trademarks.
If you have any questions, please contact us.
Mexican Trademark Law does not require trademarks, either applications or registrations, to have an attorney on file. However, this is not recommended as notifications regarding Mexican trademark applications or registrations will be published via the official gazette, as per the amended IP Law that came into effect in August, 2018. In many cases, neither the owner nor the World Industrial Property Organization (WIPO) will be notified directly; the latter applies for International Registrations via de Madrid Protocol.
Due to the fact that some types of notifications require responses within days, such as notices from the customs office, it is recommended that all Mexican trademark applications/registrations have an attorney on file and that said attorney monitor the official gazette for notifications in relation to these cases. The process of adding an attorney on file to a Mexican trademark can take several business days, not taking into account the receipt of an original Power of Attorney document from a client.
We recommend ensuring that all Mexican trademarks and registrations in a client’s portfolio have an attorney on file, even if an application has been granted without objection, in order to avoid any loss of rights due to a missed notification.
If you have any questions, please contact us.
Mexican trademarks registered after August 10, 2018
In view of the amendments to Mexican IP Law, which came into effect on August 10,
2018, all trademark Registrations granted after this date must now submit a Declaration of True and Effective Use three years after Registration is granted in order to maintain protection of the trademark. Please note that this applies to all Registrations granted after this date, as opposed to Registrations filed after this date
As per the same amendments, a Declaration of True and Effective Use must be included with all trademark renewal applications. The Declaration of true and effective use format is included within IMPI’s official renewal form.
For both cases, new registrations and renewals, the declaration of true and effective use form must be signed either by the trademark owner or the attorney on file on the owner’s behalf, and includes the trademark owner’s declaration that “the mark is in use within the Mexican territory on the following products/services…”. Also, the International Class number and all goods/services for which the mark is effectively being used must be declared. Please note that while goods may be limited (or eliminated), it is not possible to add goods to this list. Additional proof of use is not required unless requested by the IMPI.
Please contact us if you have any questions.
Amendments to the Regulations of the Mexican Industrial Property Law Industrial Property Area:
Trademark and Slogan Applications Formal Requirements
Due to amendments to the Regulations of the Mexican Industrial Property Law in August 2011, the requirements for Trademark and Slogan applications have been modified as follows:
First Use Date in Connection with Location(s)
This amendment mentions that only if the mark has been used in Mexican Territory the address of an establishment, location or facility can be indicated. If the mark has not been used, no establishment(s) location or facility shall be indicated.
Configuration of Word Marks and Slogans
This amendment establishes that work mark(s) and slogans shall be composed only of words of letters corresponding to the Roman alphabet (A, B, C…), Arabic Numbering (1, 2, 3…), and orthographic symbols which help correctly read the mark ( – , . ‘ ¿? ¡! “ ” …). If marks include other symbols (& # @ \ + …) the Mexican IP Institute will require amending the mark to a Design Mark.
Priority Information on Initial Application will suffice
This amendment allows providing the priority document information [a) Country of Conventional Application, b) Serial Number and c) filing date d) Official Priority Payment] in the initial application, without requiring the submission of a Certified Copy of said original Conventional Application. Further formalities or clarifications in connection with the Priority Information may be required by the Mexican IP Institute, if any.