Overview of Trademark Registration in Mexico
To be protected in Mexico a trademark must be registered with the Mexican Institute of Industrial Property (Instituto Mexicano de Propiedad Industrial, or IMPI). Since the legal system of Mexico is civil law (i.e., code-based), there is no common law as exists in the jurisprudence of the countries such as the United States and Canada. Therefore in Mexico registration is essential for ownership of a trademark in Mexico. Registration of the mark in other countries does not confer legal rights to the mark in Mexico.
If your mark is not registered in Mexico, you may still use it, but you risk losing it to someone who registers it first, or at least having an ownership dispute and possibly litigation on your hands. It is not uncommon in first-to-file countries for a party unrelated to the mark to attempt to obtain rights by registering first. Usage of an unregistered mark prior to its registration by a third party may provide a basis for a lawsuit to cancel the later registration, but this is almost guaranteed to be a long and costly case to litigate. And of course the litigation will be in Mexico before a Mexican court, which adds complexity and uncertainty for a foreign litigant.
It is now possible for anyone with internet access to search Mexican government databases for a trademark. A link to the IMPI search page for searches appears at the end of this overview. You (or your trademark counsel) should make a search before filing an application to determine whether the same or similar marks have been registered or applied for.
Actual use of the trademark in Mexico is not a prerequisite for an application to register the mark. The “intent to use” application provides a three-year period for beginning to use the mark in Mexico. If it has not been used within that period it may be cancelled for failure to use it. The application process typically takes about six months, but the time will vary depending on the type of mark, compliance with documentary requirements, etc. A separate application is required for each class of good or service within which the applicant wishes protection for the mark. (There are 45 international classes of goods and services.
A registered trademark in Mexico has a term of ten (10) years, which may be renewed an unlimited number of times for succeeding ten-year terms. The initial term begins on the application date in Mexico. Note that this date may “relate back”, or have a priority, equal to the date that the trademark was applied for in a country other than Mexico. Mexico is a signatory to the Paris Convention for the Protection of Industrial Property, which provides that a trademark application filed with a member country within six months after filing an application with another member country will have the priority date of the first application. This rule is very strict and must be analyzed carefully well before any trademark applications are filed.
Here are the links for IMPI and to its trademark search engine:
Mexico Patent and Trademark Office (IMPI)
Mexican Government Search Engine for Trademarks