Requirements
Requirements for Filing Trademark Applications in Mexico
The requirements for filing trademark/service trademark applications in Mexico are as follows:
1. Full name, domicile and state of incorporation of the applicant.
2. Full domicile where the goods are, or will be manufactured, or where the services are or will be rendered in Mexico or abroad.
3. Date of first use (if any) of the corresponding trademark in the Mexican Republic, indicating day, moth and year. A trademark application may be filed although it has not been used in Mexico.
4. Specific goods or services to be protected under the International Classification. Under Mexican Trademark Law, it is not possible to claim “all the goods/services” of the International classes, but rather you have to specify in detail the goods or services to be covered.
5. Trademark name or device that you wish to protect.
6. If Convention priority is to be claimed, the serial number, filing date and certified copy of the corresponding foreign application on the basis of which Convention priority is to be claimed. The certified copy, together with its literal Spanish translation, must be filed within a non-extendible term of three months counted from the filing date of the Mexican application. Convention priority must be claimed within six months after the filing of the foreign application.
7. A Power of Attorney:
a) When a physical person grants the Power of Attorney, it should be executed before two witnesses, indicating their full names and domiciles. In this case, it does not require notarial certificate, or authentication with the Hague Convention Apostille or legalization by a Mexican consul.
b) When a company grants the Power of Attorney, the authorized person before two witnesses indicating their full names and domiciles should execute it. It should be stated at the bottom or on the back of the Power of Attorney that the person who grants it is empowered to do so mentioning the public instrument or document (Articles of Incorporation, Resolution of the Board of Directors, Shareholder’s Resolution, etc.) containing said authority. It is not necessary to have it certified by a Notary Public and authenticated with the Hague Convention Apostille or legalized by a Mexican consul for patent applications, trademarks, recordation of licenses and transfers. The Mexican Institute of Industrial Property fixes the term for filing the Power of Attorney through an Office Action.
Note: Please be advised that for lawsuits ( i. e annulment, caducity, cancellation and infringement actions) the Power of Attorney should be certified by a Notary Public pursuant to the laws in effect in the place of issuance or according to the applicable International treaties ( i. e. The Protocol on the Legal Uniformity of Powers of Attorney executed between countries of the Pan-American Union, of which Bolivia, Brazil, Colombia, El Salvador, United States of America, Nicaragua, Panama, Venezuela and Mexico are members) and authenticated with the Hague Convention Apostille, or when the country where the Power of Attorney is granted, is not a member of the Hague Convention, legalized by a Mexican consul.
Since the deadlines for lawsuits are very short (depending of the type of action) and should be accompanied with the Power of Attorney with the above characteristics, in which case it would be necessary to grant the Power of Attorney in a very short term, we do recommend that you forward the Power of Attorney duly notarized and authenticated with the Hague Convention Apostille or with consular legalization, independently of the fact that the original procedure would be the filing of trademark/patent applications, etc.
Marks registered in stylized script or design marks must be used as registered and, in case of color claim it cannot be changed under penalty of subjecting the respective registration to cancellation due to infringement of the provisions of the Industrial Property Law. On the other hand, marks registered in plain block letters and those in black and white may be used freely, in whichever type of lettering or color-combination desired.
Under Mexican practice it is not allowed to file a multi-class application, but for each class an independent application must be filed.
There is no opposition system in Mexico.
The approximate length of time to fully prosecute a trademark application to registration is of six months, if no objections are raised and if no anticipations are cited, and provided that the Power of Attorney is filed together with the application, and, when Convention priority is claimed, provided that the certified copy of the foreign application is also filed together with the application.
A trademark application may be filed although it has not been used in Mexico, but if the trademark has been used in Mexico, you have to indicate the day, month and year of first use.
A Mexican Trademark Registration has a validity of ten years since the filing date. It can be renewed by periods of ten years.