Background
The economy of Mexico is the 11th largest in the world. Since the 1994 crisis, administrations have improved the country's macroeconomic fundamentals. Mexico was not significantly influenced by the recent 2002 South American crisis, and has maintained positive rates of growth after a brief period of stagnation in 2001. Moody's (in March 2000) and Fitch IBCA (in January 2002) issued investment-grade ratings for Mexico's sovereign debt. In spite of its unprecedented macroeconomic stability, which has reduced inflation and interest rates to record lows and has increased per capita income, enormous gaps remain between the urban and the rural population, the northern, central, and southern states, and the rich and the poor although there has been a large growing middle class since the mid 1990's. Some of the government's challenges include the upgrade of infrastructure, the modernization of the tax system and labor laws, and the reduction of income inequality.
Who May Apply?
Industrialists, traders, or providers of services may use a mark in connection with their industry, trade, or services. However, the right to the exclusive use of a mark must be obtained by its registration with the Mexican Institute of Industrial Property (IMPI). A declaration of protection of an appellation of origin shall be made ex officio or at the request of any person who demonstrates that he or she has a legal interest therein. The following are considered to have legal interest: (1) natural persons or legal entities directly involved in the extraction, production, or manufacture of the product or products to be covered by the appellation of origin; (2) associations of manufacturers or producers; and (3) Mexican government agencies or entities and the governments of the states of the Mexican Federation.
What Can Be Registered?
Names and visible figures that are sufficiently distinctive and capable of identifying the product or services to which they are applied, or are intended to be applied, as compared with others of the same type of category. Three-dimensional shapes. Trade names and corporate or business names or the proper name of an individual, provided that the same is not confusingly similar to a registered mark or a trade name already published. The exclusive right to use an advertising slogan is obtained by registration with the IMPI; absent special provisions, slogans are governed by the provisions of the trademark law.
What Cannot Be Registered?
The following are not registrable as marks:
(1) names, animated or changing figures or forms that are
expressed dynamically, even though visible;
(2) technical names or commonly used names of products or services
intended to be covered with the trademark, as well as words
which, in current language or in trade practice, have become a
usual or generic designation thereof;
(3) three-dimensional forms that pertain to the public domain or
have come into common use as well as those that lack originality to
easily distinguish them. The usual and ordinary form of products,
or those shapes determined by the nature or industrial function of
the products;
(4) names, figures, and three-dimensional shapes that, when their
characteristics are considered as a whole, are descriptive of the
products or services to which they refer, including words descriptive
or indicative of the kind, quality, quantity, purpose, value, or place
of origin of the products, or the time of their production;
(5) isolated letters, numbers, or colors, except where they are
combined with or accompanied by elements such as signs, designs,
or names that give them distinctive character;
(6) translations into other languages, arbitrarily changed spellings,
or artificial constructions of words not eligible for registration;
(7) signs that reproduce or imitate, without authorization, the
coats of arms, flags, or emblems of any State, province, municipality,
or similar political division, or the full or abbreviated names of
governmental or nongovernmental international organizations, or of
any other officially-recognized organization, including the verbal
designation thereof;
(8) signs that reproduce or imitate official signs or seals of control
and warranty adopted by a State, without the authorization of the
competent authority, or coins, bank notes, commemorative coins, or
any domestic or foreign legal tender;
(9) signs that reproduce or imitate the names or graphic
representations of decorations, medals, or other prizes awarded at
officially-recognized exhibitions, fairs, congresses, cultural or sporting
events;
(10) proper or common geographical names and maps, and
national or ethnic nouns and adjectives when they indicate the
origin of the products or services and may cause confusion or error
regarding such origin;
(11) the names of towns or places known for the manufacture of
certain products, to protect those products, except for the names of
places in private ownership when they are special and not liable to
be confused, and when the consent of the owner has been obtained;
(12) the names, pseudonyms, signatures, and portraits of a
person, without the consent of that person, or, if he or she is
deceased, the consent of the surviving spouse, closest blood relation,
or adopted relation;
(13) the titles of literary, artistic, or scientific works, and the
names of fictional or symbolic characters, except with the consent of their author or creator when, pursuant to the relevant law, the latter
has retained his rights, and also real personages if their consent
has not been obtained;
(14) names, figures, and three-dimensional shapes liable to
deceive or mislead the public, including those that constitute false
indications as to the nature, components, or qualities of the products
or services to which they refer;
(15) names, figures, and three-dimensional shapes identical or
similar to a mark that the IMP1 considers well-known in Mexico;
(16) a mark that is identical or confusingly similar to another
that is already registered and in force and is applied to the same or
similar products or services; however, a mark identical to the one
previously registered may be registered if the application is made
by the same owner for use in connection with similar products or
services; and
(17) a mark that is identical or confusingly similar to a trade
name applied to a firm or industrial, commercial, or service establishment whose principal business is the manufacture or sale
of the product, or the provision of the services to which the mark
refers, provided that the trade name has been used prior to the filing
date of the application for registration of the mark or the date of
the declared use thereof. However, the foregoing is not applicable
when the application for a mark is filed by the user of the trade
name, if no identical trade name exists that has been published.
Rights
Third parties are permitted to oppose applications for the registration
of an appellation of origin, provided that there is a sufficient legal
interest.
Filing Requirements
The following are required for an application for registration:
(1) Power of attorney, if the application is filed by an agent. If the
principal is a natural person, the power must be signed before
two witnesses. Where the principal is a Mexican legal entity, a
public writ or power of attorney must be notarized. Where the
principal is a foreign legal entity, a power of attorney will be accepted
if it is in accordance with the applicable legislation of the
country in which the power was granted and in case there are
no international treaties signed between Mexico and said
country.
(2) A triplicate application containing:
(a) the name, nationality, and address of the applicant;
(b) the distinctive sign constituting the mark, as well as information
on whether it embodies a verbal element, whether it
is both verbal and visual, and, where applicable, whether it
is three-dimensional;
(c) the date of first use of the mark, which may not be
subsequently modified, or a statement that the mark has
not been used;
(d) the products or services to which the mark is to be applied;
and
(e) all other particulars provided for in the regulations under
the law.
(3) Proof of payment of the fees for study of the application,
registration, and issuance of the certificate.
(4) Copies of the mark filed with the application may not contain
words or captions that might deceive or mislead the public.
When an application is filed for the protection of a mark lacking
a verbal element, the copies of the application may not contain
any words that constitute or might constitute a mark unless it
is expressly indicated that said words are to be protected as
well.
(5) The rules on the use and licensing of the mark and the transfer of rights in the mark, where the mark is applied for in the name
of two or more persons.
(6) Priority: When the registration of the mark is applied for in
Mexico within the periods specified in international treaties, or,
failing that, within six months of the filing of applications in
other countries, the filing date in the country of first filing may
be recognized as the priority date. For priority to be recognized,
the following requirements must be met:
(a) priority must be claimed and proof given of the country of
origin and filing of the application in that country;
(b) the application filed in Mexico must not seek to cover
products or services other than those provided for in the
application filed abroad;
(c) priority is recognized only for those products or services
specified in the application filed in the country of origin;
and
(d) the requirements specified in international treaties, the
Mexican law, and the regulations thereunder must be met
within three months of filing the application.
The following information must be provided in an application for
registration of an appellation of origin:
(1) name, address, and nationality of the applicant; if a legal entity
is involved, its nature, and the activities in which it is engaged
must also be noted;
(2) the applicant's legal interest;
(3) the name constituting the appellation of origin;
(4) a detailed description of the finished product or products that
will be covered by the appellation, including characteristics,
components, methods of extraction and production, or manufacturing
processes. The official standards laid down by the
Economy Secretariat to which the product, its method of extraction,
its manufacturing or production processes, and its forms of
packing or packaging are subject shall be stated when it
determines the relation between the appellation and the product;
(5) the place or places of extraction, production, or manufacture of
the product to which the appellation of origin refers, and boundaries
of the territory of origin;
(6) detailed information on the connection between the appellation,
the product, and the territory; and
(7) any other information considered necessary or relevant by the
applicant.
All applications and submissions filed must be in Spanish and must
be accompanied by a proof of payment of the prescribed fees.
Evaluation & Review
Once received, the application is subject to a preliminary examination
to determine if formal requirements have been met. The applicant
is notified of any deficiencies in the application and is granted
four months to remedy errors or omissions. If corrections are not
made within this period, the application is considered abandoned.
The filing date is deemed to be the date on which the application
contains complete information on the name, nationality, and address
of the applicant, the character of the mark, the goods and services to
which the mark applies, and proof of payment of fees, provided that
this information is provided within the prescribed two-month time
limit.
Once the application is complete, a substantive examination is made
to determine whether the mark is eligible for registration. The IMPI
informs the applicant in writing of any impediments to the registration
of the mark. If the applicant does not respond to the IMPI's comments
within four months, the application is deemed abandoned. If a
response is received within the time permitted, the IMPI will continue
processing the application. If the applicant, in responding to the legal
objections to the application, alters or replaces the mark, the altered
mark is considered a newly applied-for mark, requiring payment of
fees and submission of documents as for a new application.
After the application has been processed and legal and regulatory
requirements met, the mark is registered and the certificate issued.
The registered mark is then published in the Industrial Property Gazette.
Where the IMPI refuses registration of the mark, it shall inform the
applicant in writing and state the reasoning and legal grounds
underlying its decision. ellati at ions of origin: Once the request for protection of an appellation
of origin has been received by the IMPI and the required fees
have been paid, the information and documents submitted are
examined. If, in the opinion of the IMPI, the documents filed do not
meet the legal requirements, or if they are insufficient for consideration
of the application, the applicant will be required to make the
necessary clarifications or additions within a two-month period. If the
applicant does not remedy the omissions or errors, the application will
be considered abandoned; however, the IMPI may continue the
processing of the application ex officio, if such an action is deemed appropriate.
When the documents filed meet the legal requirements, an extract
of the application is published in the Official Gazette. If the procedure
is initiated ex officio, the IMPI will publish in the Official Gazette an
extract from the submissions and particulars of the documents required. In both cases, the IMP1 will allow a period of two months
from the date of publication for any third party who justifies his or
her legal interest to make observations or objections.
The terms of the declaration of protection of an appellation of origin
can be amended at any time, either ex officio or at the request of an
interested party, in accordance with the procedures of the Law. The
request must contain the name, address, and business of the applicant,
the name of the appellation of origin, and the applicant's legal
interest; in addition, a detailed account of the amendments requested
and the grounds on which those amendments are based must be
provided.
Duration
The registration of a mark, as well as that of an advertising slogan,
has a term of 10 years from the filing date of the application and may
be renewed for like periods.
The renewal of the registration, of a mark must be requested by the
owner six months prior to expiration of its term provided, however,
that the IMPI shall nevertheless process requests that are filed within
a period of six months following the expiration of the term of registration.
Once that period expires without any request for renewal having
been filed, the registration shall lapse.
Renewal of the registration of a mark shall proceed only if the
person concerned pays the corresponding fees and makes a sworn
statement in writing attesting to his or her use for the products or
services to which it is applied, such use having been uninterrupted for
a period of at least three years.
If the same mark is registered to protect two or more classes of
products or services, there need only be justification for renewal in
one of those classes for it to proceed in respect of all the registrations,
subject to payment of the corresponding fees.
Appellations of origin: The duration of the declaration of protection
of an appellation of origin shall be determined by the subsistence of
the grounds on which it was made, and it shall cease to be effective
only by virtue of another declaration by the IMPI. The authorization
to use an appellation of origin has a duration of 10 years from the
date of filing with the IMPI and may be renewed for like periods.
Use
The mark shall be used on national territory in the form in which it
was registered or with only such modifications as to not alter its essential
characteristics.
If, for three consecutive years, a mark is not used for the products
or services for which it was registered, there shall be grounds for the
lapse of the registration thereof, except where the owner of the mark
or its registered licensee has used it, or there are circumstances that
constitute an obstacle for the use of a mark such as import restrictions
or other government requisites that apply to the goods or services
for which the mark was registered.
Use of the mark by a registered licensee shall be considered use by
the owner of the mark.
Domain Names
There is no specific national legislation. The top level domain for
Mexico is.mx.
Enforcement
A previously registered mark may not be used in or form part of the common or registered name of any legal entity whose activity is the
production, importation, or marketing of goods or services identical or
similar to those to which the trademark is applied for, when there is
no consent in writing from the owner of the trademark registration or
from his licensee. Violation of this principle shall lead to the imposition
of the sanctions provided for in the Law, which shall be independent
of the possibility of the owner legally seeking the removal of the
mark from the common or registered name concerned and the payment
of damages.
Prohibited activities are divided into two groups: administrative
infringements and offenses.
The following acts are deemed administrative infringements:
(1) engaging in acts of unfair competition contrary to proper
custom and practice in industry, commerce, and the provision of
services, related to industrial property matters;
(2) placing products on sale or in circulation or offering services
with the false indication that they are protected by a trademark.
However, if the registration of the mark concerned has lapsed or
been declared invalid, infringement then occurs one year following
the date of the lapse or cancellation, or, where applicable, the date
at which the declaration of invalidity became effective;
(3) using a mark that is confusingly similar to another registered
mark on products or services identical or similar to those protected
by the registered mark;
(4) using a registered mark as a trade or business name without
the consent of the mark's owner, where the names are related to
establishments working with the products or services protected by
the mark;
(5) using marks that imitate or reproduce without authorization
the seals, coats of arms, emblems, etc., of states and other
governmental entities; marks that are the names, pseudonyms,
signatures, or portraits of persons without consent; titles of literary,
artistic, or scientific works without consent; marks that imitate
names, figures, three-dimensional shapes liable to deceive or
mislead the public; or names, figures or three-dimensional shapes
identical or similar to a mark that the IMP1 considers well-known
in Mexico;
(6) using a mark previously registered as a business name or
part of a business name by a legal entity whose activity is the production,
importation, or marketing of goods and services identical
or similar to those to which the registered mark is applied, without
the written consent of the owner of the registration or his licensee;
(7) performing, in the course of trade or industrial activities, acts
that confuse, mislead, or deceive the public by causing it wrongly to
believe or assume that:
(a) an association exists between a given establishment and
that of a third party;
(b) products are manufactured according to specifications, licenses
or authorizations from a third party;
(c) services are rendered or products sold according to authorizations,
licenses, or specifications from a third party; or
(d) that the corresponding products come from a territory,
region or place different from the real place of origin in a
way that the public is mislead regarding the geographical
origin of the products;
(8) attempting or achieving the goal of denigrating the products,
services or establishment of another party. However, this prohibition
does not apply to comparison of products or services for the
purpose of informing the public, provided that the comparison is not
false or exaggerated in terms of the Federal Law for Consumer's
Protection;
(9) using a registered slogan or one confusingly similar without
the consent of the owner or without the respective license to
advertise commodities, services, or establishments equal or similar
to those to which the slogan is applied;
(10) using a trade name or one confusingly similar without the
consent of the owner or without the respective license to protect an
industrial, commercial, or service establishment of the same or similar
activity;
(11) using a registered trademark without the consent of the
owner or without the respective license, on products or services
equal or similar to those to which the trademark is applied for;
(12) offering for sale or placing into circulation products equal or
similar to those to which a registered trademark is applied, knowing
that the trademark was used on them without the consent of
their owner; (13) offering for sale or placing into circulation products to which
a registered trademark has been applied that have been altered;
(14) offering for sale or placing into circulation products to which
a registered trademark is applied after having altered, substituted,
or partially or fully eliminated the registered trademark;
(15) using an appellation of origin without the respective authorization
or license; and
(16) other violations of the law that do not constitute criminal offenses
(see below).
Administrative infringements are subject to the following penalties:
(1) a fine of up to 20,000 days of the general minimum wage payable
in the Federal District;
(2) an additional fine of up to 500 days of the general minimum
wage in the Federal District for each day the infringement
persists;
(3) temporary closure for up to 90 days;
(4) permanent closure; or
(5) administrative detention for up to 36 hours.
The following acts constitute criminal offenses:
(1) the recurrence of administrative infringements after the first
administrative sanction imposed for this reason has become res
judicata; and
(2) the fraudulent falsification of trademarks on a commercial
scale.
The above-mentioned criminal offenses will be prosecuted when
charges have been filed by the injured party.
A prison sentence from two to six years, and a fine equal to 100 to
10,000 days of the general minimum wage payable in the Federal
District will be imposed on the person who commits the abovementioned
criminal offenses.