TM protection in Mexico can be granted to any TM which helps distinguish a company’s services & goods from those of its competitors. Protection for unconventional TMs in the Republic of Mexico extends to smells, motions, audio, colors & designs.
Benefits of Registering a TM in the Republic of Mexico
It only takes filling out an application form to register a TM in the Republic of Mexico. Applicants aren’t required to submit a PoA; however, it must be provided before an application is filed. Registering TMs online in the Republic of Mexico is also available; in this case, applicants can count on a ten percent discount. Signing an e-application for registering a TM in the Republic of Mexico must be preceded by opening a bank account in the Republic of Mexico.
Time & Cost
Normally, processing an application takes no more than half a year. Having a registration certificate issued costs three thousand one hundred twenty six Mexican pesos.
Applying for TM registration in the Republic of Mexico involves:
- registering a phrase or word (for smells & sounds a TM description must be provided);
- specifying a country where an application is filed (serial number ( date included);
- specifying when a TM was first used or providing a confirmation it wasn’t used yet;
- specifying an applicant’s registered legal address;
- specifying a production facility’s address or head office location;
- submitting a PoA.
Furnishing untrue or incorrect information entails cancellation of TM registration.
Pre-Registration Process
Examining an application consists of 2 stages:
- a check is carried out to ensure that the necessary information is furnished;
- a check is carried out to ensure that a TM can be registered.
If an objection is raised, applicants must respond to it within a 2-month period; there’s also the possibility of receiving two 30-day extensions.
Unless a date of the 1st use refers to Mexican territory, it’s understood that a TM has been in use. Registration of TMs is possible even if they haven’t been in use yet. TMs registered abroad provide applicants with no pre-emptive rights; the only exception is made for those of them that are specified in the Paris Convention.
Markings
MR lettering, @ symbol & Marca Registrada are permitted. Using abbreviated TMs isn’t considered as TM acceptance.
Mexico: Appealing Rejected Applications for TM Registration
Decisions on rejecting an application may be challenged by submitting an appeal to the IPI or submitting a request for invalidating a TM to Mexico’s Federal Court.
Validity
TMs registered in Mexico are valid for ten years; upon expiration, they can be extended for another ten years.
Cancellation
Unregistering a TM in the Republic of Mexico requires submitting an application for voluntary cancellation.
IP
Sounds & designs can be protected by copyright. At times, the way a product looks can qualify for protection as a copyrighted work.
E-Registration of TMs in the Republic of Mexico
Protecting TMs & domain names in the Republic of Mexico is done pursuant to the IPA. That said, revoking domain names requires filing a claim with ICANN or a local registry.
Licensing
To have legal repercussions for 3rd parties licensing agreements are to be registered with the IPI. A license’s duration, as well as services & goods for which the license has been granted/ must be clearly stated in licensing agreements.
The Republic of Mexico: TM Protection
Those wishing to protect a TM in the Republic of Mexico can do so by filing a TM infringement lawsuit with the IPI. Should a lawsuit be filed against unauthorized use of TMs, it’s necessary to ensure that it extends to services & goods that bear similarity or are identical to the ones specified in the corresponding registration documentation.
Initiating a TM infringement procedure in Mexico starts with submitting a claim to the IPI. Documentary proof corroborating a claim is to be provided as well. Only documents’ originals or their certified copies can be accepted. Unless they’re in Spanish, a translation must be provided.
In general, court proceedings may take up to one year & depend on the amount of evidence provided.
Only acts committed in the Republic of Mexico may be deemed infringing behavior; legal repercussions are restricted to a specific jurisdiction. Registering a TM in the Republic of Mexico requires entering it in the customs TM database.
There’s deadlines for filing a TM infringement claim in Mexico; however, a 2-year limitation period is envisaged for damages.
Initiating TM infringement proceedings in Mexico may entail different costs & depend on various factors (e.g. where a violator's premises are located, how many of them there are, travel-related expenditures, evidence type, etc).
Appeals
The IPI’s decisions can be contested administratively or by filing a request to invalidate a decision with the Federal Court. The latter’s decisions can be contested by filing an appeal with a district court.
Considering registering TMs in the Republic of Mexico? Looking to file a TM infringement claim? Why not contact IQ Decision UK? It’ll be our pleasure to assist you with that & many other matters related to TM registration in the Republic of Mexico.
