Legal basis in Mexico 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. In Mexico, registration is mandatory to establish rights to a trademark. The trademark registration system in Mexico follows the “First to File” jurisdiction. Although Mexico is a first to file country, earlier users may oppose an infringement or file a cancellation against a registered mark on the grounds of earlier and continuous use in Mexico or abroad. Due to the statute of limitations, this action may only be brought within three years of the publication date of the registered mark in the IP Gazette.
In the Mexican jurisdiction, an application to register a trademark can be filed by either the applicant themselves, or by a trademark attorney. The applicant can file the trademark application themselves even if they are not a citizen of, or are living in Mexico, however they will need a local address to receive any notifications. If the application is filed by a trademark attorney, they need to be a citizen of, or are living in Mexico. A Power of Attorney is not required, however it may need to be submitted during prosecution of the trademark application. A pre-filing search of the trademark is not mandatory, however it is recommended.
Once the Trademark application is filed with the Trademark authority in Mexico, they will conduct an official trademark search. After the official search, the application process begins. The entire trademark application process, from filing an application to trademark registration, is approx. 6 months. This time period is for a normal and smooth prosecution, meaning without any oppositions.
The trademark application process in Mexico begins with the Trademark authority conducting an Examination of the trademark application. This examination entails that the application is examined with regards to conformity with the filing requirements and classification, to ensure that the goods and services indeed fall within the class(es) listed in the trademark application to be filed. In addition, the application is also examined on descriptiveness, distinctiveness, deceptiveness, and on whether there is any conflict with any earlier filed application or registration.
After the examination by the trademark authority, if the trademark is registered, it will be published in the Official IP Gazette.
In Mexico, a trademark application cannot be opposed, but a trademark registration is published for opposition purposes, once registration is granted to the applicant.
The opposition period starts on the date that the trademark gets published in the Gazette and it ends about three years after the publication, however this is different per trademark publication in Mexico.
A trademark registration is valid for 10 years starting from the application date. Additionally, the registration is renewable for periods of 10 years from the application filing date.