Mexican Trademark Protection System
With the implementation of the United States Canada Mexico Agreement in Mexico, the relevant intellectual property system in Mexico has also been revised. The latest Federal Act on Intellectual Property Protection was announced on July 1, 2020 and officially came into effect on November 5, 2020. Some important revisions include: changing the validity period of the trademark from 10 years from the date of application to 10 years from the date of trademark registration; Reduced the standards for recognizing well-known/famous trademarks; Simplified the process of approving geographic standards; Removed some lengthy procedures for destroying counterfeit goods.
IMPI Mexican Industrial Property Office
The Mexican Industrial Property Institute (IMPI) is subordinate to the Mexican Ministry of Economy and is responsible for the implementation of Mexico’s Federal Industrial Property Protection Law. Its main functions include the authorization and registration of invention patents, utility models, and design patents; Registration of trademarks, advertisements, and commercial names; Authorization and announcement of origin names; Make rulings on invalidity, termination, and revocation procedures; Handle and resolve intellectual property administrative disputes, etc.
website：www.gob.mx/impi/
Telephone：55-53-34-07-00（Mexico City and metropolitan areas）／800-570-59-90(Free domestic calls in Mexico)
address：Periférico Sur 3106, Jardines del Pedregal, Demarcación Territorial Álvaro Obregón, 01900 Ciudad de México
Email：buzon@impi.gob.mx
Introduction to Trademark Registration in Mexico
3.1 Conditions for Trademark Grant
According to the Federal Industrial Property Protection Act, a trademark refers to any identifier that distinguishes a product or service from other products or services of the same or similar kind on the market. In Mexico, the following markings may constitute trademarks:
(1) Name, letters, numbers, graphic elements and color combinations, as well as holographic images;
(2) Three-dimensional shape;
(3) Trade, company, or enterprise names that are not proprietary to natural persons;
(4) Natural person proprietary names that are not identical to registered trademarks or published business names;
(5) Voice;
(6) Odor;
(7) Multiple operational or visual elements, including size, design, color, shape arrangement, labeling, packaging, decoration, or any other combination, that can differentiate from products or services on the market;
(8) The combination of the aforementioned identifiers.
3.2 Identification that cannot be registered as a trademark
According to the Federal Industrial Property Protection Act, the following markings cannot be registered as trademarks:
(1) The proprietary technical names or generic names of products or services, as well as words, names, sentences or graphic elements that have been converted into commonly used or generic names in daily language or business habits, and elements that lack recognition;
(2) Three dimensional shapes or exterior designs that belong to the public domain or have been widely used, or shapes that lack recognition, as well as the general shape of products, or shapes determined by the nature or function of products;
(3) Various identifiers that can reflect the characteristics of a product or service by synthesizing the whole, such as identifiers used to indicate the type, quality, quantity, composition, etc. of the product or service;
(4) Unauthorized reproduction or imitation of the emblem, flag or badge of any country, state, city or equivalent administrative region, unauthorized reproduction or imitation of the names, abbreviations, logos, badges or other project names or logos of international organizations, non-governmental organizations and any other officially recognized organizations;
(5) Unauthorized reproduction or imitation of medals, plaques, or their logos, names, or graphics from officially recognized cultural and sports events such as exhibitions, expos, conferences, etc;
(6) Names that are easily confused with the titles of famous literary or artistic works, as well as copying or imitating the elements contained therein;
(7) Copying or imitating official symbols or seals that are not authorized by the competent authority, or any coins, commemorative coins, or banknotes used for official payments at home and abroad;
(8) Symbols, phrases, images, statements, declarations, or business names that may deceive or mislead consumers;
(9) Similar or confused with the name of origin, geographical indication, and geographical indication with regional characteristics used in manufacturing and production.
Mexican Trademark Registration Procedure
4.1 Application channels
Firstly, directly apply for trademark registration with IMPI;
Secondly, through the Madrid system for international trademark registration, Mexico is designated as the effective region.
4.2 Submit application
The applicant or their successor in rights may directly or through an agent submit relevant application materials that comply with legal requirements to IMPI, and the language of the trademark registration application shall be Spanish. The website of the Mexican Industrial Property Office provides an electronic application channel (requiring registration with PASE, its website is) https://eservicios.impi.gob.mx/seimpi/ ）. The applicant shall submit a written application to IMPI, including:
(1) The applicant’s name, address, and email address;
(2) The identification that constitutes a trademark;
(3) The date of the first use of the trademark (which cannot be changed afterwards), or a statement that the trademark has never been used, if not mentioned, is assumed to be the first use;
(4) The specific products or services to which the trademark applies;
(5) The content presented by the trademark that cannot be retained for use refers to general and non discriminatory elements, such as variety, quality, quantity, composition, sales location, etc;
(6) If necessary, describe the trademark;
(7) The address of one or more institutions related to the trademark, indicating the date of initial use;
(8) If a trademark consists only of numbers, letters, or words from the International Latin Alphabet, the application must clearly state that the character is presented in standard font;
(9) If the registered trademark contains geographical indications, there must be a clear declaration in the application;
(10) Other information required by law, such as claims for priority, in addition to meeting the above conditions, must also indicate the country where the priority is located and the date of application in that country.
4.3 Notice
IMPI will publish the trademark application in the official gazette within 10 days after receiving it.
4.4 objection
Within one month from the date of announcement, any interested third party may raise objections to the trademark application. Trademark objections must be raised in writing, accompanied by relevant evidence and corresponding proof of payment. Objections raised after the prescribed deadline will not be accepted by IMPI, meaning that the objection period cannot be extended. IMPI will notify the applicant of any objections raised to the trademark application. The applicant must respond to the objection and submit relevant evidence within 2 months. The deadline for submitting the response can be extended by 2 months, starting from the first working day after the deadline for response ends. No written application is required for extension, but corresponding payment proof should be provided within the deadline. If the applicant fails to submit a declaration within the prescribed time limit and meets the prescribed requirements, it shall be deemed as giving up the trademark application. After the deadline for the trademark applicant to submit a declaration expires, the applicant and the objector enter the dispute procedure, and both parties need to submit their statements to IMPI within 5 days; At the expiration of the 5-day period, IMPI will make a ruling. If the objection is established, the trademark registration application will be rejected. Otherwise, the trademark application will enter the examination process.
4.5 Review Procedure
IMPI will review trademark applications that have not been objected to or whose objections are not valid during the announcement period. If the trademark application documents do not comply with laws or relevant regulations, or if there are any obstacles to the registration of the trademark application, IMPI will inform the applicant in writing. The applicant shall provide a response within 2 months from the date of notification to meet the requirements or eliminate obstacles. The response deadline can be extended for another 2 months, starting from the next working day after the response deadline ends. No written application is required for extension, but corresponding proof of payment within the specified period should be provided. If the applicant fails to submit a declaration and meet the prescribed requirements within the prescribed time limit, the trademark application will be deemed abandoned.
4.6 Approved registration
After examination, if the trademark application meets the registration requirements, IMPI will issue a registration certificate to the applicant and publish the trademark in the official gazette; If the trademark application does not meet the registration requirements, IMPI will make a decision to reject the trademark registration application and notify the applicant in writing, explaining the relevant reasons and legal basis.
4.7 extension
The application for trademark renewal must be submitted within 6 months before or after the expiration of the trademark validity period. When submitting the renewal application, the applicant must explain the true situation of the trademark use, specify the goods or services to which the trademark applies, and pay the corresponding fees. If the true situation of trademark use is not explained, the applicant shall make corrections within 2 months. If no corrections are made, the trademark renewal application will automatically become invalid. The validity period of trademark registration is 10 years from the date of approval of registration, with each renewal period of 10 years, and can be renewed indefinitely.
4.8 Trademark is invalid
According to the Federal Industrial Property Protection Law of Mexico, trademark registration may be deemed invalid in the following situations:
(1) Trademark registration violates the Federal Industrial Property Protection Act or other effective laws and regulations at the time of registration.
(2) The trademark has been used in Mexico or abroad for the same or similar products or services, or is identical or similar to another trademark to the extent of causing confusion, prior to the registration application date. The prior user claiming rights must provide strong evidence and prove that the trademark has been continuously used before the registration application date or before the registrant declares the first use date.
(3) The trademark registrant has not confirmed the authenticity of the first use date stated in the application.
(4) Trademark registration is approved due to errors, negligence, or differences in judgment. The trademark is identical or similar to another trademark, causing confusion, and applies to the same or similar products or services, while the other trademark is already in the application or in the registration period.
(5) For trademarks registered abroad, if the agent, representative, user, distributor of the trademark registrant, or any person directly or indirectly related to it, applies for and obtains the trademark or another similar trademark that causes confusion in its name without its explicit permission;
(6) The trademark is maliciously registered. There are differences in the time limit for invalidation applications based on the different reasons for trademark invalidity mentioned above.
The applicant may file an application for invalidation for the reasons listed in (2), (3), and (4) within 5 years from the date of publication and effectiveness of the trademark registration in the official gazette. The applicant may file an application for invalidation at any time from the date when the trademark registration is published in the official gazette and becomes effective, based on the reasons for invalidity listed in (1), (5), and (6). In addition, Mexico’s Federal Industrial Property Protection Law provides for the automatic invalidation of trademark registrations.
Trademarks that fall under the following circumstances do not require IMPI to make a declaration, and their registration will automatically become invalid:
(1) Not renewed in accordance with the provisions of the Federal Industrial Property Protection Act;
(2) The trademark has been discontinued for three consecutive years prior to the application for termination, except for legitimate reasons recognized by IMPI. If used for partially registered products or services, the trademark may also be partially invalid, except for legitimate reasons recognized by IMPI;
(3) When submitting the trademark usage certificate to IMPI within 3 months after the end of the third year of trademark registration, the true and effective use of the trademark was not explained as required.
The Federal Industrial Property Protection Act also stipulates that if the owner of a trademark causes or tolerates its trademark to become a generic name corresponding to one or more registered goods or services in commercial media and widespread public use, causing the trademark to lose its uniqueness as a distinguishing product or service, the registration of the trademark shall be revoked. In addition, the owner of a registered trademark can apply for voluntary revocation of the trademark registration at any time.
Introduction to Mexican Trademark Office Fees
| Pay Service | Amount (pesos) |
| The national application for trademarks, advertisements, and commercial names shall be completed at the end of the process, or certificates shall be issued as appropriate | 2,695.18 |
| Objections to each trademark, advertisement, or business name registration application | 3,704.09 |
| Renewal of registration for each type of national trademark, advertisement or commercial name | 2,597.77 |
| Trademark Usage Statement | 985.67 |
| Application for evaluation or declaration of well-known trademarks | 2,599.22 |
| Application for Evaluation or Declaration of Famous Trademarks | 2,521.09 |
| Declaration of each recognized well-known trademark | 975.34 |
| Famous Trademark Declaration | 45,873.28 |
| Famous Trademark Declaration | 45,873.28 |
| Declaration renewal for each type of well-known trademark | 1,234.31 |
| Renewal of Famous Trademark Declaration | 44,567.37 |
For detailed fees, please refer to the official IMPI website.