Filing Patents & Trademarks in Mexico

In the past, enforcement of intellectual property rights in Mexico has sometimes been thought of as rather lax. However, recent changes in the law and in the general attitude of the country to intellectual property, particularly since the Law for the Development of Industrial Property was enacted in 1991[1], have sought to improve the status of intellectual property generally in Mexico and also the ability of a patentee to enforce its patents in Mexico. Mexico is rather unusual in that infringement actions must be brought before the Mexican Institute of Industrial Property (IMPI)[2] rather than the courts, the courts becoming involved only after the Patent Office has determined whether an infringement exists and, if its validity has been brought into issue, that the patent is valid. If such requirements are met, then the patentee may bring an action before the courts to obtain criminal penalties or a civil remedy against the infringer. Additionally IMPI has the right in an administrative action to impose certain sanctions on someone it has found to be an infringer depending on the seriousness of the infringement and the sanctions requested.

obtain a trademark registration, an application must be submitted in writing to the Institute with the following details:
I-Power of attorney appointing legal representative.
II .- Name, nationality and address of the applicant;
III-The hallmark of the brand, mentioning whether it is nominative, figurative, combined, or three-dimensional;
IV-The date of first use of the mark, which can not be changed later, or a statement that has not been used. In the absence of any indication it is presumed trademark has not been used;
V. - The goods or services to which the mark is applied in accordance with the latest version of Classification of Nice.

To register trademarks in Mexico on behalf of two or more persons acting as co-applicants, information as to the rules on the use, licensing and transfer of rights of the trademark agreed by the applicants should be submitted with the application.

As for the priority rights of trademarks
Article 117 of Trademark Law states that when a request for a trademark in Mexico made within the time limits determined by international treaties, six months from the first application made the country of origin of applicant, will be recognized the date of priority of the first filing of the application upon request and payment of a fee.

To recognize the priority rights applicant must meet the following requirements:
I. - That when applying for registration, priority rights are claimed by disclosing the country of origin, the date of filing and number of the application in that country;

II .- The application filed in Mexico will be intended to apply to the same goods or services covered by the application submitted abroad; in the event additional goods or services are applied for in the same application, the priority rights will be recognized only to those submitted in the country of origin;

III .- That within three months following the filing of the application, a certified copy of the application filed in the country of origin should be submitted to Trademark Office in order to meet the requirements indicated by international treaties, trademark law and its regulations.

The term for which is granted a trademark registration in Mexico is Ten years from the date of issuance, renewable for periods of the same duration. The renewal of the mark can be made six months before it expires, or six months after its expiration, in accordance with article 134 of the Industrial Property Law, upon payment of a fee.