Trademark registration in Mexico

The country of Mexico is located in North America, bordering the United States, the world’s largest consumer market, which facilitates exports and economic cooperation. Mexico is also a bridge between North and South America, playing an important role in the global supply chain. The service sectors that contribute the most to GDP (about 60%) include tourism, financial services, BPO. The tourism industry plays an important role in the Mexican economy, attracting visitors from all over the world by its unique historical and cultural sites, beautiful beaches and rich cuisine. Mexico is an attractive destination for foreign companies looking to outsource services such as customer care and data processing,… The automotive industry is one of Mexico’s most important industries, with large volumes and exports to many countries. The electronics industry is also developing strongly, attracting many foreign investors. In order to attract domestic and foreign investment capital, the Mexican government has many tax incentives and tax exemptions for foreign investors. Therefore, more and more businesses are expanding their business scope here, in order to be able to distinguish their trademarks from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in Mexico through the article below.

Legal basis

• Federal Industrial Property Law

Definition of “trademark” in Mexico

According to Mexican law, a trademark is defined as follows: “Any sign that is perceivable by the senses and can be expressed in a way that allows to clearly and accurately identify the object of protection, distinguishing a product or service of the same type or the same category on the market from other products or services.” This means that a trademark can be:

• One word (usually a brand name)
• A symbol or symbol
• Combination of words and symbols
• Even sounds or scents (although less common.

It is important for the trademark to be able to distinguish the business’s product or service from other products or services in the market. It cannot be generic or describe the product itself.

Conditions for trademark registration in Mexico

Must be able to represent graphics:  Trademarks must be able to represent graphics clearly and accurately, usually through drawings or images. It cannot be an abstract concept or something that cannot be expressed visually.

Uniqueness: Trademarks must be unique and not easily confused with existing trademarks. It should not be generic or describe the product itself. For example, a business cannot trademark a “chair” for a company that manufactures chairs.

Availability: The trademark must be available for use and not previously registered for the same or similar products and services. It is advisable to look up the trademark before filing the application to ensure that the chosen business mark has not been used.

Truthfulness: Trademarks must not mislead or mislead as to the nature, quality, or origin of a product or service.

Compliance with Laws: Trademarks must not violate public order or morals, or contravene Mexican laws or regulations.

Types of trademarks that can be registered in Mexico

Traditional brands:

• Words: Brand names, slogans, or any combination of words that function as a source identifier.
• Logos or Icons: These can be simple or complex designs that visually represent the brand of the business.
• Trademark combination: Combine words and symbols to create a unique trademark.

Non-traditional trademarks:

• Three-dimensional shape: The unique shape of the product packaging or design element of the enterprise can be trademarked. (Think Coca-Cola bottles)
• Audio trademarks: Music, special sounds, or audio signatures related to a business’s trademark may be registered.
• Scent trademarks: Although less common, unique and recognizable scents used with a business’s products can be trademarked. (Think of Play-Doh’s signature scent)
• Holograms: These can be used to enhance security and brand recognition.
• Color combinations: Specific color combinations used consistently on a business’s product or packaging can be protected.
• Commercial interface: This refers to the overall image of your product, including packaging, labels, and design elements.

Trademark filings in Mexico

To register a trademark in Mexico, the applicant needs to prepare the following documents:

• Application form: The application form can be downloaded from the website of the Mexican Federal Institute of Industrial Property. The application must include information about:
  • Trademark owner
  • Trademark needs registration
  • List of goods or services for which the trademark is used
  • The country or region where the applicant wants trademark protection
• Trademark drawings: Drawings must clearly and accurately represent the trademark to be registered. Drawings can be submitted as digital drawings or hand-drawn drawings.
• Power of attorney (if applicable): If the applicant authorizes another person to represent the applicant during the trademark registration process, the applicant needs to submit a power of attorney.
• Registration Fee: The fee for registering a trademark in Mexico will depend on the quantity of goods or services listed on the application. Below is a table of some of the fees when registering a trademark

How to file a trademark application in Mexico

To file for trademark protection in Mexico, you can file using the following filing methods:

• Direct Submission: You can come directly to the office of the Mexican Federal Institute of Industrial Property at Periférico Sur No. 3106 Piso 9, Col. Jardines del Pedregal Mexico, D.F., C.P. 01900 to submit the application and related documents.
• By Post: You can send your application and all required documents via postal service or courier service to the address of the Mexican Federal Institute of Industrial Property at Periférico Sur No. 3106 Piso 9, Col. Jardines del Pedregal Mexico,  F., C.P. 01900.

Registration of trademark protection in Mexico through the Madrid System

The Madrid system is a convenient and cost-effective Mexican league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Mexico accessed the Madrid Protocol on 19 February 2013.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Application consists of the Madrid Singles of Vietnamese origin and the Madrid Applications with Mexican designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Mexican;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Mexico of Viet An Law Firm

• Perform the search and notify customers in writing the results of trademark search in Mexico;
• Draft the application and file directly on behalf of the trademark owner and monitor the status of the filing of the trademark application in Mexico;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Mexico;
• Support follow-up, representative resolution of objections and feedback with intellectual property representatives performing procedures in Mexico.
• Receive dispatches, certificates and hand over to customers (if any).

If you want to file a trademark application in Mexico, please contact Viet An Law for the most effective support.