Protecting Your Trademark in Mexico

Why Apply for a Trademark in Mexico?

Did you know Mexico is Canada’s third largest trading partner (behind only China and the U.S.)? In 2019, two-way merchandise trade between Canada and Mexico was in excess of $44 billion. A year later, despite the hit to global trade which resulted from the COVID-19 pandemic, that total was a substantial $36 billion.

Between its skilled and affordable workforce, its geographical proximity to Canada, and the benefits provided by the Canada-United States-Mexico Agreement (CUSMA), and its predecessor, the North American Free Trade Agreement (NAFTA), the amount of trade between Mexico and Canada should not come as a surprise. Many Canadian businesses have recognized the value in entering the Mexican market and their uniquely advantageous position from which to do so.

Note, however, that, just like in Canada, a registered trademark is a critical component of a business plan for entering the Mexican market - and not just any registered trademark will do. While many prudent Canadian businesses will already own a trademark registration, trademark protection is territorial. A Canadian trademark registration does not protect that trademark in other jurisdictions – thus, in Mexico, trademark protection depends on a Mexican trademark registration. Although unregistered marks are afforded some degree of protection in Mexico, as in Canada, the availability of such protection is limited. Thus, a trademark registration, and the exclusive rights it offers, are substantially preferable to relying on potential unregistered trademark rights.

You may apply to register as your trademark: names, letters, numerals, figurative elements, holographic signs, 3-dimensional shapes, sounds, scents, the plurality of operating elements, image elements or any other elements that, when combined, distinguish goods or services.

The Process of Registering a Mexican Trademark

How is it different?

Although the process of registering a Mexican trademark may generally resemble that of registering a trademark in Canada, there are noteworthy differences.

These differences include:

• A Canadian applicant for a Mexican trademark requires a Mexican trademark attorney to file the application. Note, however, that applicants can, and many applicants do, continue to work with their representatives in Canada to file the application by liaising with the foreign attorney.
• Mexico’s is a single-class trademark system. This means only one class of goods and services may be included within a single application. In order to register a trademark in association with multiple classes of goods and/or services, multiple independent applications are required. Fortunately, the cost of a Mexican trademark application is lower than that of a Canadian or U.S. application, making this administrative hurdle a little smaller than it might otherwise be.
• In contrast to Canada, the opposition period for an application for a Mexican trademark registration comes before examination by the trademarks office. The application is published within 10 business days of filing, and the opposition period is one month. The publication of the application at this stage is not to be confused with subsequent publication if and when the mark is granted registration.
• In Mexico, whether an existing mark which is similar or identical to your own constitutes a bar to the registration of your mark depends on the status of the other mark. In Canada, an application for a mark which is identical to another mark on the register may be allowed if the goods and services in the registration are substantially different from those provided in the application. In Mexico, if the identical or substantially similar mark is considered either “famous” or “well-known”/”notorious”, a similar or identical mark will not be allowed to register irrespective of differences in goods and services (the famous or notorious mark need not even be registered). Further, if the mark is among those considered “famous” (these are marks which are known by the majority of local consumers), this will be the case irrespective of whether it is expected confusion of the registered and the applied-for mark may occur. A mark may be declared famous or well-known based on evidence submitted by the mark’s owner or may be estimated by IMPI to be famous or well-known.
• A trademark typically takes under 12 months to register, although the timeline may be extended in the event of an opposition. This is a substantially faster processing time than is currently available in Canada.
• Unlike in Canada, where non-use of a trademark typically only becomes an issue if a third party brings it to the attention of the trademark registrar, the holder of a registered Mexican trademark must declare use within 3 months of the trademark registration’s third anniversary, or else their registration will automatically lapse. The Declaration of Use does not, however, require evidence as does a similar filing in the U.S. The declaration must also be made whenever the mark is renewed (every 10 years).
• Unlike in Canada, where the applicant does not need to furnish evidence proving use of the trademark to obtain registration, in Mexico the applicant can submit information on the date of the first use of the trademark in Mexico. If no first use is claimed or specified, the trademark office will assume that the mark has not been used.

How to Apply

Applicants for Mexican trademarks may pursue trademark protection in one of two ways: either by filing an application directly with the IMPI (el Instituto Mexicano de la Propriedad Industrial), or by designating Mexico in a Madrid application.

In brief, a Madrid application is an international application for a trademark administered by the World Intellectual Property Office (WIPO) within which multiple territories may be designated as territories in which protection for that trademark is being sought. When trademark protection is desired in multiple jurisdictions, a Madrid application can offer cost savings and simplify the process.

As mentioned above, a Canadian applicant for a Mexican trademark must be represented by a Mexican trademark attorney. You may choose to retain that attorney directly, or, if you’re already represented by a Canadian law firm, your firm may be able to arrange for the filing of your Mexican trademark application by working with one of its foreign associates in Mexico. This is advantageous because it consolidates your trademark protection, reducing the work involved with and simplifying the maintenance of your global IP. Further, the firm’s foreign associates are usually practitioners with which they work regularly and for good reason. Thus, working with a Canadian firm may also save you the trouble of vetting a Mexican representative.

While your attorney will guide you through the application process, you may want to get a head start on your application by considering the following:

• What trademark do you want to register? Is there more than one? Which one is most commonly used and/or would be most commonly used in Mexico? Which one has a reputation in Canada? Would your mark be considered “famous” or “well-known” in Mexico? Given that Spanish is the official language in Mexico, do you want to protect the Spanish translation of your trademark(s) as well?
• What are the goods and services in association with which the trademark will be used? Are they the same as those in association with which the trademark is registered in Canada? In other countries? When answering these questions, be sure to note the discussion above regarding the Declaration of Use required at regular intervals during the life of a registered mark. Not only does a broad registration cost more, it may present a challenge when it comes time to demonstrate use. Further, recall that a single application is limited to a single class of goods and services. Consider how many applications you’re prepared to file and pay fees for.

After Filing

Once your trademark application is filed, you can expect a similar process to that of Canada to unfold, with the exception of the near-immediate publication of your application for opposition, as noted above.

Your application will be examined by the trademarks office for compliance with various formal and substantive requirements. The trademarks office will assess whether your trademark is eligible for registration as is and advise you (rather, your representative) either way. If your trademark is deemed ineligible for registration, your representative may respond to the office with argument that the trademark should be eligible and/or by amending your application. Generally, responses must be received within two months of the communication from the trademarks office. Failure to respond will result in the application being deemed abandoned. Multiple rounds of back and forth between the applicant and the trademarks office may be involved before a final decision is rendered. In the event that the application is finally rejected, the applicant has no more than 30 days to challenge the decision.

If any objections from the trademarks office are overcome and no opposition is received, or any opposition received is resolved, your trademark will subsequently register. Once registered, you’ll need to maintain your trademark registration by regularly declaring its commercial use in Mexico, requesting renewal, and paying the associated fees.

Like a Canadian registration in Canada, a Mexican trademark registration is critical to a successful expansion into the Mexican market. By protecting your trademark across the country, a trademark registration allows you to grow your business and reputation without fear of it being exploited by third parties using your mark without permission. A trademark registration sets your business up for lasting, undisturbed success.

If you’re considering expanding your business into Mexico and have questions about protecting your trademarks on the other side of the border, call us today for a complimentary and confidential initial telephone appointment.