Since Mexico is a “first-to-file” country, we recommend that you file your trademark in Mexico before you start using it.
In Mexico, if you use an unregistered trademark under the risk of and infraction action from a third party with a similar or identical trademark, or under the risk that a third party starts using your trademark for which you wouldn’t have the legal arguments to defend your trademark, or even worse, a third party could request the registration of your unprotected trademark for themselves.
Mexico uses the Nice Classification system.
An important difference is that if you want to file a trademark application for multiple goods which fall in many classes, it will be necessary to file individual applications for each class of goods.
The full legal name of the applicant (either your company or your personal name)
The full address of the applicant.
The trademark name. If you are filing for a logo, we need to see the logo.
The products which you sell or plan to sell under your trademark (provide a list).
The services which you offer or plan to offer under your trademark (provide a list).
There is no need to execute a power of attorney since the application is considered under bona fide basis.
Power of attorney is usually not required.
In order to claim priority, no priority document have to be filed. It’s enough to indicate foreign trademark number, country of filing and date of filing in order to claim priority from a foreign trademark.
Mexican application must be filed within 6 months in order to claim priority from the country of origin.
When a trademark application is filed, it becomes subject to two different types of examination.
First of all, in the formal examination, the Trademarks Office will ensure that all the required information was submitted and that the statement of goods and services was correctly prepared.
Secondly, in the substantive examination, the examiner will determine whether the trademark can be registered or refused on absolute and relative grounds.
Absolute grounds:
A trademark will be refused in Mexico if it is descriptive, misleading or generic. Also, a trademark in Mexico will be refused if it includes the name of organizations or other natural persons without their consent, or if it replicates any work protected under copyright.
Relative grounds:
Mark is identical or confusingly similar to a previously registered trademark. Mark is identical or similar to a famous trademark (unless permission from the trademark owner is obtained).
Under lack of distinctiveness or if any of the circumstances established on point 7 are present on the trademark.
The relative grounds for refusal are as follows: Marks identical or confusingly similar to previously registered marks or marks for which registration is pending, applied to the same or similar products or services. Renowned or famous marks, unless applied by the legitimate owner.
Those that are descriptive of the products or services to be protected, those similar to other trademark registrations in full effect or in process of registration filed before, those that have capricious words in their elements, those that tend to confuse the consumers, those that include or are the name of organizations or other natural persons without their consent, those that replicate any work protected under copyright.
Yes, surnames or full names can be registered as trademarks in Mexico, provided that the owner has the written authorization of the person.
Trademarks that describe the products name, quality or their characteristics, are considered descriptive and are not registrable in Mexico.
For foreign geographical names, only those trademarks that are well-known to the public shall not be used as trademarks. Trademarks that consist of geographical names that have other meanings can be registered.
No, multi-class trademark applications are not allowed in Mexico. Each class means a different trademark application in Mexico.
