Trademarks

Protection of  Trademarks, including product and service marks, either individual or collective, company names, brand names, slogans and logos, including the preparation, filing and prosecution of Trade Mark applications in Mexico and all over the world. Information on the Mexican Trademark registration process is available here.

Registrable:

  1. Any word or group of words, and visible figures, distinctively enough to clearly identify goods or services upon which said words and/or figures are used, from other goods or services of the same class or species;
  2. any three-dimensional figure meeting the above characteristics;
  3. commercial names of partnerships; and
  4. individuals names of physical persons, provided that there is not homonymous already registered through a trademark.

Not Registrable, Inter alia,

  1. moving or animated words, figures and three-dimensional forms;
  2. proper technical or common use names of the products or services to be protected with the trademark;
  3. three-dimensional forms belonging to the public domain or that became part of the common use and those that have no originality, and the usual and regular configuration of products as well as those shapes giving either by nature or the manufacturing process;
  4. words, figures or three-dimensional forms describing the goods or services to which these are applied. Words designating species, quality, quantity, destination, worth and origin of goods or the production season are also included in this restriction;
  5. a trademark similar to a previous registered trademark, in force, protecting the same or similar goods or services;
  6. a trademark identical or similar to the point of confusion to a trade name applied to a commercial establishment manufacturing or selling goods or rendering services, as applicable similar to those of the trademark application, provided that the trade name has been used before the filing date of that stated in the trademark application.

Unlike patents and designs, it is possible to use a trademark before applying for registration and, in some cases, it is necessary to show that the mark has been used in commerce before it can be registered.

If you are involved in exporting your products/services abroad, it is important to consider protecting your trademarks abroad, as in many countries you can only acquire rights by registering your trademarks.

Formal Requirements for Filing Trademark Applications

-Phonetic and device searches
1.-Name of the mark;
2.-Detailed list of goods/services upon which the mark us applied. These must fall into one single class of the International Classification (Nice Agreement); and
3.- Sample of the device or design.

-Trademark registration
1.- Name and/or figure of the mark;
2.- Detailed list of goods/services upon which the mark is applied, these must fall into one single class of the International Classification (Nice Agreement);
3.- Date of first use in commerce in Mexico (if ever used the trademark in Mexican territory);
4.- Name, full address and nationality of applicant;
5.- Location of applicant´s principal establishment and/or factory address wherein articles are sold/manufactures or wherein services are rendered;
6.- Country and date of filing of the priority application, if applicable;
7.- Ten (10) black and white prints of the mark, and ten (10) color labels if colors are to be claimed;
8.- Power of Attorney. The same as patents;
9.- Certified copy of home application, if priority is to be claimed, accompanied by the Spanish translation thereof; and
10.- Assignment of rights, if needed.
INFORMATION IN POINTS 1-6 SHALL BE GIVEN UPON FILING APPLICATION SO THAT OFFICIAL FILING DATE AND PRIORITY RIGHTS MAY BE SECURED.

Diagram

FLOW CHART FOR TRADEMARKS IN MEXICO The following flow chart intends to give the reader an idea of the procedural stages followed by trademarks starting from the filing of the application with the mexican patent and trademark office up to the renewal of rights.