In accordance with the Federal Law for the Protection of Industrial Property, a trademark is defined as “any sign perceptible by the senses and capable of being represented in a manner that allows the clear and precise determination of the object of protection, which distinguishes products or services from others of the same kind or class in the marketplace.”
Why is it important to register your trademark?
- Your business will project greater formality.
- It will become part of your company’s assets as an intangible asset.
- You will be able to grant trademark licenses to third parties and even franchise.
- You may initiate legal actions against any party that makes unauthorized use of it.
- On certain platforms, such as Amazon, trademark registration is a requirement in order to sell.
What are the requirements to register a trademark?
Trademark name.
Logo.
Name and address of the owner(s).
CURP or RFC of the owner(s).
Rules of use in cases of co-ownership.
Products or services to be protected.
Filing receipt or registration certificate if the trademark has been filed in another country.
Proof of payment of the IMPI official fee.
FAQs
How long does trademark registration take?
On average, between 3 and 6 months, depending on whether an opposition is filed against your application or whether the authority issues an official action.
If I register my trademark, will I have worldwide protection?
Trademark protection is territorial. This means that if you register in Mexico, protection will only apply in Mexico. If you require protection in another country, a separate registration must be filed in that jurisdiction.
What happens if you do not register your trademark?
Although trademark registration is optional, the risk is that a third party may register your trademark in their own name and even prevent you from using it.
Do I need to be registered with the SAT before registering my trademark?
Trademark registration is completely independent from registration with the SAT, so it is advisable to protect your trademark as soon as possible.
Can a trademark be registered in the name of two or more persons?
Yes, it is possible to apply for a trademark registration in the name of two or more persons. It is only necessary to submit an agreement establishing the rules of use.
What is the term of validity of a trademark registration?
A trademark registration is valid for ten years and may be renewed for equal periods, provided that the renewal is requested within six months before or up to six months after the expiration of its original term.
What happens if my trademark registration is denied?
If the IMPI denies the registration of your trademark, you may challenge its decision before the Federal Court of Administrative Justice.
How is a trademark registered in the United States?
To carry out trademark registration in the United States, the application must be filed before the United States Patent and Trademark Office (USPTO). This must be done through an attorney authorized to practice before said office, and the applicant must choose one of the available filing bases: use in commerce, intent to use, foreign registration, or foreign application.
Types of Trademarks
Word Marks: These trademarks identify a product or service through a denomination. They may consist of letters, words, or numbers, and may even include punctuation marks that facilitate proper reading. They are composed solely of literal elements and may be used in any typeface or size, with the owner reserving the right to use them at their discretion.
Figurative or Design Marks: These trademarks identify products or services through figures, designs, or logos, without containing letters, words, or numbers.
Three-Dimensional Trademarks: Reserved for packaging, containers, wrappers, or the three-dimensional shape of products in their three dimensions (height, width, and depth). These trademarks must not contain words or drawings.
Composite Trademarks: Composed of a denomination accompanied by a logo that also displays the brand name. They may contain additional words or numbers and are classified as “elements not requiring protection.”
Trade Dress: Composed of distinctive elements such as color, shape, labeling, and packaging which, when combined, allow for the clear identification of a product in the marketplace.
Sound Trademarks: Composed of musical sounds, natural sounds, or sounds produced by machines. Their purpose is to distinguish products or services in the marketplace.
Scent Trademarks: Based on the use of a scent, aroma, or fragrance as a distinctive and exclusive feature of a brand, seeking to associate the product or service with its commercial origin.
Holographic Trademarks: Images that appear to move when viewed from different angles, commonly used to generate trust and associate a product with authenticity.
Certification Marks: Indicate the quality of products or services. The owner must control their use and apply sanctions in cases of use that does not comply with the established rules.
Other procedures related to trademark registration.
Declaration of Trademark Use:
The Declaration of Real and Effective Use of a trademark, pursuant to the Federal Law for the Protection of Industrial Property, is a formal statement submitted by the owner of a registered trademark or their legal representative in Mexico. This declaration must be filed three years after the trademark registration is granted. Through it, the declarant confirms that the trademark is being continuously used in commerce within Mexican territory, specifically for the products or services listed in the registration. This declaration is mandatory to maintain the validity of the trademark registration and to avoid cancellation due to non-use.
Trademark Renewal Application
The Trademark Renewal Application, pursuant to the Federal Law for the Protection of Industrial Property, is the process by which the owner of a registered trademark or their legal representative in Mexico requests an extension of the registration’s validity. This application must be filed before the expiration of the ten-year term from the date of grant or last renewal, or up to six months thereafter. The applicant must declare that the trademark continues to be used in commerce for the products or services specified in the registration. Renewal ensures that the owner maintains exclusive rights over the trademark for a new ten-year period, preventing its expiration.
Responses to IMPI Official Actions.
When examining a trademark application, the Mexican Institute of Industrial Property (IMPI) may issue an official action informing the applicant of formal deficiencies, objective legal impediments, the existence of prior trademark registrations that constitute an obstacle to granting the registration under examination, or the existence of oppositions filed by third parties. It is crucial to respond to such official actions in a timely and proper manner to avoid abandonment of the trademark application. Once a response is submitted, the IMPI will decide whether to grant or deny the registration.
Opposition to trademark registration.
The Federal Law for the Protection of Industrial Property establishes that any interested party may file an opposition against the registration of a trademark, provided it is filed within one month from the date the publication of the trademark application to be opposed takes effect in the Industrial Property Gazette issued by the Mexican Institute of Industrial Property (IMPI).
Through this procedure, in an agile and significantly more cost-effective manner than a nullity action, it is possible to demonstrate to the IMPI examiner that there are grounds upon which the trademark registration should not be granted.