TRADEMARK PROCUREMENT IN MEXICO

KIND OF REGISTRATIONS FILING AND PROSECUTION REMARKS POST-GRANTING REMARKS TREATIES SIGNED IN MEXICO

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Kind of Registrations

TRADEMARKS AND SERVICE MARKS.

Protection in Mexico is granted to:

Traditional trademarks: letters with specific design, words, devices and three-dimensional marks. Letters other than those used in the Latin alphabet are considered as devices. Non-Traditional trademarks: Holograms, sounds and smells. Trade Dress: The elements that constitute the trade image such as, size, design, color, disposition, form, label, package and decoration that distinguish the products or services in the market. The legal life of these registrations is 10 years from filing date of the application and can be renewed for equal terms.

CERTIFICATION MARKS.

Protection is granted to distinguish products or services having qualities or characteristics that are certified by the trademark holder such as product components, manufacture conditions, quality, procedures and the geographical origin of the products or services. The certification mark may be comprised by the name of a geographical area or any other sign related to said area. Their legal life is the same as trademarks.

SLOGANS. Protection is granted to words, phrases or sentences used to announce or promote goods and/or services. They must not include devices, designs, symbols, or letters other than those used in the Latin alphabet. Their legal life is the same as trademarks.

WELL KNOWN AND FAMOUS MARKS. Well-Known and Famous Marks may apply for an official acknowledgment at the IMPI, no matter they have no registrations in force in Mexico, by submitting evidence that a specific sector or most of the consumers of the local market, respectively identify the mark.The duration of Official acknowledgement is of 5 years.

KIND OF REGISTRATIONS FILING AND PROSECUTION REMARKS POST-GRANTING REMARKS TREATIES SIGNED IN MEXICO

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Filing and Prosecution Remarks

CLASSIFICATION. Mexico is added to Nice Classification.

PRIORITY RIGHTS. Applicants can claim priority rights under Paris Convention provided the trademark application is filed within the 6-month period counted from foreign filing date. A certified copy of the foreign application is not required, a scanned copy suffices.

REPRESENTATION. It is not necessary to submit the Power of Attorney but the attorney in charge must have been appointed by the applicant. Thus, a scanned copy suffices.

FIRST USE. Trademark applications that do not declare a date of first use shall be deemed as not being used; this may imply the impossibility to claim a prior use before anticipations cited during examination.

OPPOSITION. Anyone having legal standing can submit an opposition within the term of one month after publication date, based on a violation of any IP Law provisions. This action must be submitted in written along with all kind of evidences, except from confession and/or testimony, unless they are submitted in written. Trademark applicant will be notified on the opposition.

PUBLICATION OF OPPOSED TRADEMARK APPLICATIONS. A second publication takes place within 10 working days after the expiration of the opposition term, when an application is being opposed. The applicant may submit a response to the opposition within one month, after the second publication to defend its trademark. Said writ must also include evidence supporting the arguments.

EXAMINATION OF THE PROOFS AND CLOSING ARGUMENTS. Upon concluding the response term, the IMPI reviews the offered evidence. The parties are allowed to submit their closing arguments in a 2 days term.

RESOLUTION. A substantive examination is held considering both arguments, and a resolution is issued by the authority, which is notified to the parties.

KIND OF REGISTRATIONS FILING AND PROSECUTION REMARKS POST-GRANTING REMARKS TREATIES SIGNED IN MEXICO

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Reconsideration Remarks

Against the Mexican IP Institute resolution of denial of the trademark registration, applicant may submit a reconsideration request that is processed by the same authority. In case the IMPI confirms its resolution, it can be appealed before the courts.

Post-Granting Remarks

COMPLIANCE OF USE. The use of a Registered Trademark, Collective Trademark or Slogan is compulsory upon granting. The holder must declare the actual and effective use of the trademark within the following 3 months after the third anniversary of granting, otherwise, it will be considered lapsed. Failure to use the trademark or declaring the use will result on the lapse of the registration. At the time of declaring the use, it is required to quote the precise goods or services distinguished with the sign.

• DECLARATION OF USE AND RENEWAL. Along with the renewal petition a declaration of actual and effective use of the products or services must be submitted, otherwise, the registration will be considered lapsed. The renewal application can be submitted 6 months prior to the lapsing date or within the grace period of 6 months after the lapsing date.

KIND OF REGISTRATIONS FILING AND PROSECUTION REMARKS POST-GRANTING REMARKS TREATIES SIGNED IN MEXICO

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Treaties Signed by Mexico

Paris Convention of 1883 (In force in Mexico since 1903)

Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (In force in Mexico since 1966) Nairobi Treaty on the Protection of the Olympic Symbol (In force in Mexico since 1985). The

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

(In force in Mexico since 1995)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (In force in Mexico since 2001)

Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (In force in Mexico since 2013)

KIND OF REGISTRATIONS FILING AND PROSECUTION REMARKS POST-GRANTING REMARKS TREATIES SIGNED IN MEXICO

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KIND OF REGISTRATIONS FILING AND PROSECUTION REMARKS POST-GRANTING REMARKS TREATIES SIGNED IN MEXICO

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