Mexico IP law

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

Law of Industrial Property

Federal Law for Administrative Procedures

Federal Law of Contentious Administrative Procedures

Federal Code of Civil Procedures

 

International law

Which international trademark agreements has your jurisdiction signed?

Paris Convention

Madrid Protocol

Nice Agreement

TRIPS

 

Regulators

Which government bodies regulate trademark law?

Mexican Institute of Industrial Property

Federal Court of Administrative Justice

Administrative Circuit Courts

General Prosecutors Office

 

Registration and use

Ownership of marks

  • Who may apply for registration?

According to the Mexican Law of Industrial Property trademark registrations may be applied for by aby individual and companies devoted who wants to distinguish products or services.

 

Scope of trademark

  • What may and may not be protected and registered as a trademark?(Please distinguish between rights pursuant to registration and rights under the common law, if any, and note whether service marks, collective/certification marks or ‘non-traditional’ marks, such as sounds, smells, designs, etc, may also be registered).

In Mexico, trademark protection is granted to any sign that is perceivable by the senses and subject to be represented in a clear and precise manner which is capable of distinguishing products and services from others in the market may be registered as a mark. Our Mexican law grants protection for non-traditional marks, specifically for sounds, scents, motions, colours and product design or configurations.  Likewise protection for certification marks is now available in Mexico.

 

Unregistered trademarks

  • Can trademark rights be established without registration?

While 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 notorious and famous marks, which may be enforced without a registration, provided that suitable and sufficient evidence demonstrating such privileged status is exhibited.

 

  • Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

As our Law is drafted, famous foreign marks may be protected, provided that it is demonstrated that they are known by the Mexican consumers.

 

  • The benefits of registration

What are the benefits of registration (eg, increased remedies for infringement, access to specialised courts, legal presumptions, availability of border enforcement mechanisms against unauthorised goods)?

While there are some exceptions provided in our Law where unregistered marks may be enforced, in general terms, only registered marks may be opposed against third parties by means of cancellation, infringement or criminal actions.  Also, only registered marks may be used as grounds of opposition.

 

Filing procedure and documentation

What documentation is needed to file a trademark application (eg, power of attorney, certificate of corporate good standing, etc)? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The only document that needs to be actually submitted Is an application form.  No power of attorney needs to be filed, also there should exist one granted at least on the filing date.  Documents supporting claimed priority rights no longer need to be exhibited.

Electronic trademark filing Is available and in fact a 10% Is granted on the government fees paid for this type of filing.  Up to this date, only an Individual holding a bank account in determined Mexican banks and recorded before the Mexican Tax authorities may sign an electronic application.

Trademark searches are available online, although cautious Is recommended, as the data base may not be entirely updated.

 

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? (It might be useful to the reader to know what an average total cost is in relation to the registration of an average mark in a single class.)

According to the official document whereby 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, electronic filing of trademark applications is available. This type of application may in some cases be assessed in a more expeditious 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.

The official fee for the study, revision and issuance of a certificate of registration is 3,126.41 Mexican pesos. If the application is filed online, the government grants a 10 per cent consideration.

If the application is objected to by the authority, then delays in obtaining the registration may be expected. Once a response to an official action is filed the examiner in charge will have another four to six months to issue a decision.

In the event that official actions are issued, additional official fees will have to be paid in the amount of between 377.89 Mexican pesos and 755.78 Mexican pesos per requirement or objection.

To file a trademark application, the following are required:

  • the word or phrase to be registered and a black and white or colour 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; and
  • a simplified power of attorney, which document must be executed by an authorised officer of the applicant company and by two witnesses.

The accuracy of this information is very important since Mexican law provides that a trademark registration may be cancelled if it is granted upon false statements contained in the application form.

Registrations become into effect once the certificate Is Issued and published in the Official Gazette.

 

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Mexico follows the International 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.

Another issue to be taken into account is that according to our Law, goods and services to be covered must be specified.

 

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

Trademark applications are 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.

The extensions do not need to be applied for, as they operate automatically provided that complementary fees of approximately 377 Mexican pesos per month are paid in a timely fashion.

Traditionally, the authority has disregarded documents of consent and coexistence agreements, upon the argument that beside having the obligation to protect the rights of brand owners, they had to protect consumers from being led into confusion or error when finding to identical or confusingly similar marks for Identical or similar goods and services. However, due to an amendment to our law, the Mexican Institute of Industrial Property has to accept documents of consent when dealing with confusingly similar marks.

 

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

When filing the application, the applicant must state whether the mark has been used. Our law expressly states that the date of first use should refer to Mexican territory. 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 use of a mark must begin. However, registrants will have to file a declaration of use within the three-month period following the third anniversary of the corresponding registration. If said declaration is not filed, the registration will automatically lapse.

 

Markings

What words or symbols (if any) can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking Is mandatory in order to be able to enforce Infringement actions or to claim damages.  The symbol ®, the letters M.R. or the expression Marca Registrada (registered trademark) are allowed.  The use of the term TM Is not recognized as the adoption of a mark.  If marking has not been made, our Law provides the possibility of amending this circumstance by demonstrating the brand owner has announced to the public that the mark Is registered by, for example, making an advertisement In such sense In a newspaper.

 

Appealing a denied application

Is there an appeal process if the application is denied?

The decision to deny an application may be challenged either by means of an administrative recourse before the Mexican Institute of Industrial Property or through a nullity action that must be filed before the Federal Court of Fiscal and Administrative Justice, which has a specialised chamber for intellectual property matters.

 

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

According to Mexican law, applications should be published for opposition purposes 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 corresponding publication, an applicant has a one-month term in order to file its response to set out the grounds of opposition.

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.

Oppositions may be filed on the ground of bad faith, namely, in those cases where the marks are applied for against good practice or when the applicant intends to obtain a benefit against the interests of the rightful owner of the corresponding mark.

The grounds for opposition are not limited to pre-existing rights, but include other absolute grounds, such as the descriptiveness of a proposed mark.

The opposition process as outlined in law does not suspend or interrupt the registration process and thus should not delay the study and ruling of trademark applications.

The examiners still carry out the formal and novelty exams and thus are able to object to applications on both relative and absolute grounds.

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.

Aside from the opposition system, it is still possible to expunge a trademark registration by lodging a cancellation action, which may be grounded upon the following causes of action:

  • the registration was granted against the applicable provisions;
  • a third-party claim to have rights over the mark derived from prior use in connection with the same or similar goods;
  • the registration was granted upon false statements contained in the application form;
  • the registration should not have been granted in the light of a pre-existing mark covering the same or similar goods or services; or
  • the registration was obtained in bad faith, namely by a distributor, licensee or agent of a foreign registered mark.

Costs related to oppositions and cancellation actions depend on many factors, such as the type of evidence to be rendered and whether certification, legalisation and translation of documents will be required. On the other hand, in Mexico there are no standardised tariffs or guidelines regarding professional fees, which may vary depending on the engaged firm.

Thus, it is of the utmost importance to work closely with counsel to come up with a time and cost-effective strategy.

 

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

In Mexico, a trademark registration is in full force and effect for a 10-year period, it being possible to file subsequent renewals for 10 years. The 10 years are counted from the filing date of the corresponding application.

An important issue to take into account is that currently declarations of are compulsory, being necessary to file them at two different moments:

  • within the three-month window following the third anniversary of a registration; and
  • along with renewal petitions.

If the third anniversary declaration of use is not filed, the corresponding registration will automatically lapse. The official fee regarding the commented declaration of use are 1,143.38 Mexican pesos.

While Mexican legislation does not provide a guideline on the use that suffices to defend a registration (eg, if token use is enough), the law’s administrative regulation states that the use of a mark should be performed in accordance with the practices of the relevant market.

 

Surrender

What is the procedure for surrendering a trademark registration?

In order to surrender a trademark registration, the owner must file a voluntary cancelation petition.  While not provided in the Industrial Property Law, if the petition is filed on behalf of registrant it is advisable to exhibit a suitable power of attorney where it is clearly stated that the proxy is appointed to cancel registrations, as otherwise the examiner may issue a requirement in such a sense.

 

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Designs and sound marks may be protected through copyright.  Sometimes, trade dress could be also protected as copyrighted work.  Still, it is important to bear in mind that copyright protection has a certain duration and, in any event, required the existence of an individual to be recognized as an author.

 

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Online trademark and domain name protection may be sought through the Industrial Property Law as there Is no specific legislation.  However, in order to cancel domain names It Is necessary to file a domain name dispute, either before the local register (.mx) or before ICANN (.com).  Other useful tool brand owners should consider are the takedown processes provided by social media administrators.

 

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

According to domestic legislation, licence agreements may and must be recorded before the Mexican Institute of Industrial Property in order to produce legal effects against third parties.

While Mexico is a signatory to international treaties that provide that use of a mark should inure on behalf of its owner if the owner controls such use, it is advisable to record licence agreements.

For many years the federal courts held that domestic law had a preferential effect with regard to international treaties. Consequently, recordal of a licence agreement was considered as the only manner in which use performed by a licensee could inure to the benefit of a registrant.

At present, the Federal Court’s criterion is different as they have considered that international treaties have the same constitutional rank as domestic law and thus there are many judgments that have recognised controlled use in light of NAFTA or TRIPS.

Notwithstanding the above, in order not to depend on a criterion that could change at some point, it is advisable to record licence agreements.

As for the terms of the license agreement, the document must clearly state the duration of the license as well as the goods or services in connection with which the authorization to use Is granted.  Additionally, it should be stated whether licensee will be authorized to take legal actions against third Infringing parties.  If no mention to this regard Is made, then It will be understood that licensor Is granting such authorization.

 

Assignment

What can be assigned?

Rights derived from trademark applications and registrations may be assigned.

While the Mexican Institute of Industrial Property had sustained that benefits derived from the use of a mark and, in turn, goodwill was not transferred in an assignment, there are some judicial precedents where this criterion has been reversed.

Assignments may be total or partial depending on whether the mark is entirely transferred or if only a portion of the property rights is assigned. In the latter case, the mark will be understood as being in joint ownership.

When negotiating the assignment of a mark it is important to verify that no other marks may be considered as linked. According to Mexican law, linking of a mark takes place when there are identical or confusingly similar marks covering products or services of a similar nature that pertain to the same owner. If linked marks are detected, the authority will not allow the assignment of only one application or registration and therefore all of the marks should be included in the assignment document.

 

Assignment documentation

What documents are required for assignment and what form must they take (eg, notarisation)? What procedures apply?

In order to record an assignment, an original document of assignment, preferably depicting the involved registrations, or a duly certified and legalised copy, should be submitted along with a completed form. All documents drafted in languages other than Spanish should be accompanied by their translation. The translation does not need to be certified.

Once the petition to record an assignment Is submitted, the examiner will review the exhibited documents as well as the trademark database to make sure no linked marks have been left out of the assignment.  By linked marks, our Law provides all applications or registrations for the same or a confusingly similar mark covering Identical or similar goods.

 

Validity of assignment

Must the assignment be recorded for purposes of its validity?

The assignment of a mark must be recorded in order for it to produce legal effects against third parties.

 

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Mexican law recognises security interests over registered marks. The security interest should be recorded before the Mexican Institute of Industrial Property to produce legal effects against third parties.

In order to proceed with such a recordal, an original document or a certified and legalised copy thereto must be exhibited along with the corresponding translation into Spanish, if applicable.

 

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The enforcement of trademark registrations should be made before the Mexican Institute of Industrial Property by means of infringement action.

In these types of actions, the plaintiff can claim unauthorised use of an identical or a confusingly similar mark, it being always necessary that such use is performed in connection with goods or services that are identical or similar to those covered by the corresponding registration.

Additionally, manufacturing, transportation, distribution and commercialisation of counterfeit goods are activities that constitute felonies that may be pursued by means of criminal actions before the Federal Prosecutor’s Office.

 

Procedural format and timing

What is the format of the infringement proceeding?

The administrative infringement procedure commences with the filing of a claim before the Mexican Institute of Industrial Property. Along with the claim, the plaintiff must exhibit and attach all documents offered as evidence. Documents must be submitted in the original or as certified and legalised copies and accompanied by their Spanish translation if they are drafted in a different language.

The Mexican Law of Industrial Property allows submission of all types of evidence. The only particular requirement is that confessions and witness proof should be rendered in writing.

Once the plaintiff’s writ is admitted, the Institute orders the service of the alleged infringer, who will have a 10-working-day period in order to file its responsive brief and supporting evidence.

According to Mexican procedural law, the plaintiff has a three-day term in order to rebut the exceptions and evidence submitted by the alleged infringer.

Thereafter, the Institute will grant both parties a five to 10-day term in order to submit final allegations. Once this term expires the Institute will be able to commence with the drafting of its decision.

Prosecution of an infringement procedure may typically last seven to 12 months, depending on the amount and nature of the evidence submitted by the parties.

 

Burden of proof

What is the burden of proof to establish infringement or dilution?

As a general rule, it is the plaintiff who has the burden of proof to demonstrate the fact upon which an infringement is alleged.

However, the alleged infringer also has the burden of proof to demonstrate the facts upon which exceptions are opposed, for example, the existence of a parallel imports status for the infringing goods.

 

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

According to the Law of Industrial Property the owner of a trademark registration and duly recorded licensees may initiate infringement and criminal actions.

If a registrant wants to prevent licensees from seeking remedy for an alleged trademark violation, then such a prohibition must be expressly contained in the corresponding licence agreement.

 

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution? (Mention any significant or unusual jurisdictional issues regarding foreign activities.)

Only activities performed within Mexican territory may be alleged as infringing conduct as the legal effects of trademark registrations are limited to Mexico.

According to current legislation, it is possible to record trademarks at the Customs Trademark Database.  This Database has a dual purpose of speeding inspection and clearance procedures of registered importers, licensees, etc., and, at the same time, improve inspection procedures intended to detect counterfeit and IP-infringing merchandise while at the same time establishing reliable information channels to alert owners and/or right holders so they can produce the relevant legal actions to protect their trademark rights as early as possible.

Upon this Database Customs Agencies are able to effectively detect the import of infringing or counterfeited goods and provide much needed support for the competent government agencies (Mexican Institute of Industrial Property and the General Prosecutor’s Office) to act in these matters, as custom authorities may only take action by means of an order issued by either one of those agencies and/or a Judge.

 

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Mexican legislation does not recognise or regulate discovery as it is understood in other jurisdictions.

However, a particular provision in the Law of Industrial Property provides that if a plaintiff or an alleged infringer has offered all the evidence they have under their control and states that a certain piece of evidence is in the power of their counterpart, the authority may order the exhibition of such documents or object.

In such cases, the authority should take all the necessary steps to protect the disclosure of documents or information that may constitute confidential material.

 

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The typical time frame for an infringement action before the Mexican Institute of Industrial Property is seven to 12 months depending upon the amount and nature of evidence that is submitted.

Once a decision is rendered, its revision before the Federal Court of Fiscal and Administrative Justice may take anywhere from eight to 12 months.

Finally, the decisions rendered by the Federal Court may be contested by means of a judicial appeal (amparo) that can be ruled within a six to eight-month period.

 

Limitation period

What is the limitation period for filing an infringement action?

According to our Law, there Is no limitation period for filing an Infringement action.  However, there Is a statute of limitation of two years to claim damages that must be taken Into account as In order to make such a claim upon trademark rights brand owners must first obtain a decision from the Mexican Institute of Industrial Property stating and Infringement has existed.

 

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs related to infringement litigation depend on many factors such as the location of the premises of the alleged infringer, the number of premises, travel expenses, the type of evidence to be rendered and whether or not provisional measures are requested. Thus, a bond must be submitted if the alleged infringer appears before the Institute or not, as well as government fees.

On the other hand, in Mexico there are no standardised tariffs or guidelines regarding professional fees, which may vary depending on the engaged firm.

Thus, it is of utmost importance to work closely with counsel to come up with a time and cost-effective strategy.

 

Appeals

What avenues of appeal are available?

The decisions of the Mexican Institute of Industrial Property may be challenged either by an administrative recourse before the same Institute or by means of a nullity action before the Federal Court of Fiscal and Administrative Justice, which has a chamber specialised in intellectual property matters.

Thereafter, the decisions rendered by the Federal Court may be contested by means of a judicial appeal (amparo) that has to be filed before a circuit court.

 

Defences

What defences are available to a charge of infringement or dilution, or any related action?

An alleged infringer could structure a defence upon parallel imports if the involved goods were legally introduced into the Mexican market by the brand owner or a licensee.

Another line of action would be to oppose prior use of the same or a confusingly similar mark within Mexican territory in connection with goods or services identical or similar to those covered by the registration upon which the infringement is alleged.

Additionally, the alleged infringer could challenge the validity of a trademark registration or oppose its name or corporate name if the same was adopted prior to the filing date of the registered mark or the one stated as of first use.

 

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

During the prosecution of the infringement action, the plaintiff may request the adoption of provisional measures to prevent the infringement conduct persisting during the time of litigation.

These provisional measures may consist in seizure of goods, closing of premises, orders for suspending commercial or service activities related to the infringing conducts or even retrieval of goods alleged to be infringing.

Once there is a final and conclusive decision declaring the existence of a trademark infringement, the plaintiff may claim damages, for which purpose an action would have to be lodged before a civil court.

According to Mexican law, damages are awarded in an amount equivalent to at least 40 per cent of the public selling price of each product or the price of the rendering of services involved in the alleged infringement.

 

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Depending on the nature of the involved goods, services, individuals or companies, the owner of a registered trademark can submit its case to a non-governmental association such as an industrial chamber.

However, the decisions rendered by such associations are not enforceable beyond the association’s sphere and thus would not have legal effect.

Moreover, in order to be able to claim damages it is essential to obtain a decision from the Mexican Institute of Industrial Property declaring the existence of the alleged infringements.

 

Update and trends

 

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

While a year has passed from the latest the amendment to Mexican Industrial Property Law, unfortunately, we have not seen many registrations for non-traditional marks.  Additionally, we are still waiting for the Administrative Regulation required to fully implement the commented amendment.

 

Law stated date

 

Correct on

Give the date on which the information above is accurate.

August 4, 2019.

 

 

Marcela Bolland

mbolland@uhthoff.com.mx

Hamburgo 260

Col Juárez

06600 Mexico City

Mexico

Tel: +52 55 5533 5060

Fax: +52 55 5208 8387

www.uhthoff.com.mx