Mexico (MX)
11-19-2012 (Newsletter Issue 17/12)
Accession to Madrid Protocol
Mexico has deposited his country's instrument of accession to the Madrid Protocol on November 19, 2012. The treaty will enter into force with respect to Mexico on February 19, 2013. It brings the total number of members of the international trademark system to 89.
Source: www.wipo.int
05-15-2012 (Newsletter Issue 8/12)
Accession to Madrid Protocol
On Wednesday April 25, 2012, Mexico's senate approved the accession to the Madrid Protocol. At this moment it is unclear when it will be enforced or what will happen with the opposition system, since the Mexican Intellectual Property Law does not contemplate opposition.
Source: SAC Abogados, Mexico
05-14-2012 (Newsletter Issue 8/12)IP Regulation ModifiedIntellectual Property regulations in Mexico were recently modified due to the amendments to the Industrial Property Law (IPL) that were published the on January 27, 2012 in the Mexican Official Gazette, and became effective on January 30, 2012.
The amendments to the IPL include changes in connection with the service of notice of official communications issued by the Mexican Institute of Industrial Property (MIIP), the legal implications of disallowing the practice of a visit of inspection to the MIIP’s commissioned inspectors, the inclusion of new causes for infringement of IP rights, as well as a new penalty for those infringement actions committed with the knowledge that an infringement was being committed.
For further information, please also check the article of Mr. Eugenio Ruíz from Becerril, Coca & Becerril here
Source: Becerril, Coca & Becerril, Mexico 07-01-2011 (Newsletter Issue 9/11)
Change of Requirements for Claiming Priority
As of June 13th, 2011, the certified copy of foreign applications for trademarks is no longer required for claiming priority. Providing the filing date and number will suffice.
Source: NJQ & Associates
10-11-2010 (Newsletter Issue 15/10)
Fees and Services Amended
The Mexican Institute of Industrial Property (IMPI) has revised fees for services rendered by IMPI with respect to patents, utility models, industrial designs and layout designs of integrated circuits, trademarks, slogans, trade names, appellations of origin, protection of industrial property rights and copyright in trade, technical information services and other general services such as issuing copies, certification and registration.
These amendments take effect on October 11th, 2010.
Source: www.impi.gob.mx and Novopatent International Service, S.C.
09-01-2010 (Newsletter Issue 14/10)
No Power of Attorney Needed
According to the amendment to Article 181 of the Mexican Law of Industrial Property it is now possible to file trademark, tradename and slogan applications before the Mexican PTO with no need of a Power of Attorney, but simple asserting under oath to tell the truth that someone is empowered to act on behalf of applicant(s).
This new provision entered into effect on January 7, 2010, and it is applicable to applications filed before the Mexican PTO as from January 7, 2010.
Source: www.novopatent.com
11-17-2009 (Newsletter Issue 4/09)
New Online Services of Industrial Property Institute
The Mexican Institute of Industrial Property has been improving the electronic services that it provides to the public. In recent years it has created Banapat - a patent and trademark database that logs the publication of patent applications and granted patents, utility models and designs - and MarcaNet, which allows the public to access general information online and consult the status of trademark applications and registrations.
The institute has recently introduced a number of other services.
The Industrial Property Documents Viewfinder - known as ViDoc - allows users to search for, consult and download publicly available institute files on:
- Applications and registrations for trademarks, patents, utility models and designs;
- Litigation (once resolved); and
- Bibliographical files on patents.
ViDoc makes consulting files quicker and more efficient, as users need no longer consult MarcaNet and Banapat individually. Moreover, the two databases provided only general information, whereas ViDoc allows users to view complete files online. Thus, original hard copies must be consulted only where there has been a change of ownership or where the file relates to ongoing litigation, as some writs may not have been documented in the electronic search system.
The Industrial Property Information System's website contains virtual copies of the institute's Industrial Property Gazette for reference and download. These publications include information regarding:
- Publication of patent applications;
- Granted and abandoned patents, utility models and design registrations, trademarks, trade names and slogans;
- Changes of ownership and trademark renewals; and
- Notifications and declarations relating to litigation.
Another online system - the Payment Site and Administrative Services - allows for online payment of government fees. After making a payment using the service, the payer must print a receipt and file it with the institute, together with the relevant briefs. In the event of a payment error or a last-minute decision not to proceed with the filing of a brief, the official receipt can be cancelled and the funds recovered, provided that the receipt has not already been filed.
Solmarnet is a new system for filing trademark applications online. Once the trademark application form is completed online, it is printed and the system generates a reference number. This number indicates the time at which the application was filed with the institute. There is no need to present a separate trademark application, as the Solmarnet application is in the required format. The reference number allows data to be uploaded automatically from Solmarnet and entered directly into the institute's records, which helps to avoid typographical errors. However, the reference number does not constitute proof of filing with the institute. The system can also be used to refile an application in order to correct errors or add missing information.
The institute's new services are free and have been developed to facilitate its management of industrial property matters by making it easier to consult and file information.
Contributed by Amalia Bagües, Becerril, Coca & Becerril SC, Mexico, on November 16th, 2009.
Legal basis is the Industrial Property Law, in force since June 27th, 1991; last amended April 12, 2012.
Mexico is a member of the Madrid Protocol and a member of the Andean Pact. According to the Andean Pact agreement, there are common rules in trademark law in all member states of the Andean Pact.
Trademark protection is obtained by registration. The right to use a trademark can also be acquired by sufficient commercial use; however, this right may be impugned during a statutory period.
The general rule of the Mexican IP system is first to file, but in case of litigation or conflict the previous IP use can be enforced against the registration and, therefore, the owner who proves previous use may get the cancellation of the registration.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, devices, three-dimensional forms, titles of intellectual or art works, and names of television and radio programs and any combination of the mentioned signs (Art. 89).
The following trademark types are registrable: trade marks, service marks, collective marks, trade names and slogans (Art. 90).
The application is filed at the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) (IMPI).
A separate application has to be filed for each class.
Foreign applicants need a local agent.
No power of attorney is required. It is sufficient to state under oath that someone is empowered to act on behalf of the applicant(s). For litigation proceedings, a certified and legalized/Apostilled POA is required.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination are rejected by the Trademark Office. However, as the Trademark Office has recently adopted several criteria on descriptiveness, such application can be registered if distinctiveness is demonstrated before the Administrative Court in a Nullity Appeal against the decision of the Trademark Office.
The processing time from first filing to registration or first office action is approx. 3 to 6 months.
After registration, the trademark is published in the “Trademarks Gazette”.
Trademarks can be applied for by everyone.
A couple of electronic services have been introduced by the Mexican Institute of Industrial Property recently to facilitate its management of industrial property matters. Fees can be paid online and the Industrial Property Gazette can be viewed online.
National:
Opposition to an application for registration is not foreseen in the Trademark law, but after registration cancellation or nullification may be requested.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
According with Section 3 of the Madrid Protocol, in regard with Section 6 septies of Paris Convention, the Opposition right is granted to the Trademark holders, but as long that the Law does not for see the proceeding of it there is no local legislation that regulates opposition. There is only the option to expunge a trademark registration from the registry, based on any of the causes of cancellation established by the Industrial Property Law (non-use cancellation action / nullity actions).
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years provided that use is taking place.
No previous use is required to file a trademark application and to obtain registration. However, if the mark is in use and such use could be demonstrated it is advisable to indicate the date of first use at the time of filing the application.
If the trademark has not been used within 3 years from registration or for more than three years, it may be subject to cancellation. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
It is advisable to verify the trademark use every 3 years in order to provide a defense to a third party seeking the trademarkʼs cancellation due to non-use.
The official fee for filing a trademark for one class is approx. USD 225.00.
Trademark Licence Agreement
In Mexico licence agreements must be in writing. It is permitted to license the use of unregistered trademarks (trademark applications). A trademark may be licensed for all or only some of the goods or services for which a trademark registered. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing. The licensor must exercise control over the permitted use of the registered trademark, by means of periodic reviews of the licensee’s trademark use.
Recordal
There are provisions in law for the voluntary recordal of a licensee with the Mexican Patent and Trademark Office (Art. 136). There is no time frame for a recordal and there is no prescribed form for a licence agreement.
The following documents are required for a recordal:
1. The original agreement with autographic signatures (whenever the agreement itself does not prove faculties of both parties executing the agreement, legal instruments will be needed that prove the faculties of the signatories)
2. A power of attorney granted on behalf of the person requesting the recordal of such licence before the Trademark Office with the corresponding legalisation
Effectiveness
In general, the license becomes enforceable against third parties as from the date when the Mexican Patent and Trademark Office grants recordal of the same. The license must be recorded in the Institute in order to produce effects against third parties. The licence is not required to be published.
Infringement Proceedings
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. He may also call upon the trademark owner to institute infringement proceedings. Even in the event that the owner refuses or neglects to do so, the registered user may institute proceedings in his own name at any time unless otherwise agreed upon in the contract. The person holding a license registered with the Institute shall, unless stipulated otherwise, be empowered to institute legal proceedings for the protection of the rights in the trademark as if he were the owner. The restrictions to this possibility may be determined by the proprietor freely, without any statutory limitation into this regard. Therefore, the scope of enforcement by a licensee can be as broad or as limited as the owner decides. The licensee does not need to cite the proprietor as co-defendant in such proceedings, unless provided otherwise in the agreement.
Remarks
Intercompany payments have to be performed at market values in compliance with the Arm’s Length Principle. Specific deductibility requirements apply for licence payments involving foreign parties. For instance, that the payment is made to the entity who has registered the trademark in Mexico.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
290,00 € |
80,00 € |
| Word Mark Search (identical) |
140,00 € |
30,00 € |
| Extended Search (word mark, company name, domain) |
670,00 € |
80,00 € |
| Device Mark Search (availability) |
690,00 € |
450,00 € |
| Trademark Owner Search |
340,00 € |
|
| Company Name Search |
450,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
620,00 € |
560,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
02-21-2013
Becerril, Coca & Becerril, S. C., México D.F., Mexico
Sac Abogados, México, D.F., Mexico
04-09-2012
Novopatent International Service, S.C., Cuernavaca Morelos, Mexico
11-18-2010
Moeller IP Advisors, Buenos Aires, Argentina
11-02-2010
Novopatent International Service, S.C., Cuernavaca Morelos, Mexico
Licensing
02-21-2013
Becerril, Coca & Becerril, S. C., México D.F., Mexico
Sac Abogados, México, D.F., Mexico
12-15-2011
Baker & McKenzie, Mexico City, Mexico
Novopatent International Service, S.C., Cuernavaca Morelos, Mexico