General trademark information of Mexico

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

However, the law provides for the possibility of bringing a cancellation action due to an earlier use in Mexico or abroad and to defend against an infringement action due to an earlier use in Mexico. An enforcement action cannot be taken relying on use because there are no common law rights.

• Use of an unregistered mark for any goods or services is not legal.

However, it may expose the user to infringement proceedings if a third party holds a previously registered trademark, or, if a third party secures a registration after the use was commenced, it may bring legal actions against the user. The party will be able to defend itself by claiming and proving the earlier use.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark;
  • it provides regional, national, and/or local protection;
  • it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark

• it allows the registrant access to bring actions in particular courts;
• it helps to deter others from unlawfully using the trademark;
• it provides a defense to infringement;
• enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
• it confers the ability to recover maximum monetary damages for infringement;
• it encourages licensees and provides the opportunity to generate royalties through licensing.

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices

• certain three-dimensional shapes;
• colors

• slogans;
• sounds;
• smells (olfactory trademarks);
• trade dress/get-up;
• holograms;
•  certification trademarks. Many of these noncoventional trademarks are allowed in Mexico as a result of the amendments to the Industrial Property Law.

• The special requirements for the registration of three-dimensional shapes are:

• The special requirements for the registration of colors are:

• The special requirements for the registration of sounds are:

• The special requirements for the registration of smells are:

• The special requirements for the registration of trade dress are:

• The special requirements for the registration of holograms are:

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • well-known marks

• service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning)

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  • trademark laws, in the form of collective marks or certification marks.

• The following products or categories are subject to GI protection in this jurisdiction:

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  • disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law;

• The national office is accessible online at the following URL:

• The official register can be searched online at the following URL:

• An applicant does not benefit from pre-filing use of a trademark.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • a registry (other than the usual trademark registry);
  • an administrative process;
  • a determination by the court (other than one resulting from an action for infringement).

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Nairobi Treaty;
  • Madrid Protocol;
  • Nice Agreement;
  • Vienna Agreement;
  • Lisbon Agreement.

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

• Either actual use or intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • description of trademark;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • dates of first use

• official filing fee

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • description of trademark;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services.

• The list of goods and services in this jurisdiction may specify:
  • a list of names commonly used in the trade for the specific goods or services of interest;
  • the relevant entire (long) alphabetical class listing.

• The relevant entire (long) alphabetical class listing is appropriate to use in applications for:
  • goods and/or services.

• The following number of copies of the trademark must be submitted:

• Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
  • in response to an official request

• if there is a change of attorney.

• In this jurisdiction, the following types of registration are available:
  • national;
  • international.

• This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

• Applications can be filed online at the following URL:

• The official file can be accessed online at the following URL:

• Applications are officially searched as to prior trademarks.

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

• This jurisdiction uses the Nice Classification System.

• If a trademark is or will be used in more than one class of goods and/or services, it is necessary to file a separate application for each class of goods and/or services.

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, even if not a citizen of or domiciled in the jurisdiction

• a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • online.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant

• citizenship of applicant;
• application number;
• application date;
• goods/services;
• priority claim information

• date of first use;
• representation of trademark.

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
  • conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
  • The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive)

• The order of the application process is as follows:
  • publication, examination, registration.

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application establishes prima facie proof of ownership of a trademark.

• Opposition is available

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality.
  •  The grounds for opposition are set out in Article 173 of the Federal Law for Industrial Property Protection.

• An application is published for opposition purposes before formal examination of the application.

• The opposition period begins on the following date:

• The opposition period ends on the following date:

• The following parties may initiate an opposition:
  • any interested party.

• Oppositions can be filed online.

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application must be for all of the goods or services listed in the application.

• An assignment of a registration must be for all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal)

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal).

• Legal verification of a written assignment document of an application is required by:
  • notarization;
  • legalization.

• Legal verification of a written assignment document of a registration is required by:
  • notarization;
  • legalization.

• An assignment of an application must be recorded to be effective.

• An assignment of a registration must be recorded to be effective.

• Use of a mark that is the subject of an application can be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application can be made for a portion of the territory covered by the application.

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).
• A license of an application can be sole (only one licensee and the owner).
• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed

• Use by a related company of a registered mark must be licensed.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • territory of the license;
  • quality control provisions;
  • signature by licensor;
  • signature by licensee;
  • express permission to sublicense, if appropriate;
  •  indication of whether the licensee may undertake protective legal actions. If no indication is made, the licensee will be able to undertake these legal actions on the owner's behalf.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  •  indication of whether the licensee will have enforcement rights or whether they will remain exclusively with the licensor.

• Legal verification of a written agreement to license an application is required by:
  • notarization;
  • legalization;
  •  Please note that if the document is filed in the orignal (bearing original signatures), it does not need to be notarized or legalized.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• A license of an application need not be recorded to be effective.
• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  • notarization;
  • legalization.
  •  Please note that if the document is filed in the original (bearing original signatures), it does not need to be notarized or legalized.

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • deed of assignment, legalized by the respective consulate/apostille

• certificate of proof of change of name, legalized by the respective consulate/apostille;
• certificate of merger, legalized by the respective consulate/apostille.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

• The requirements for recording liens against trademark records, such as security interests, are as follows:

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications

• the right to bring a cancellation action against a subsequent conflicting registration;
• the right to sue for infringement against confusingly similar third-party trademark use;
• the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
• the right to obtain damages for infringement

•  a registration may be used as a shield against infringements.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  •  counting from the date in which the registration is published in the IP Gazette. However, a registration may always be contestable on a particular ground, which could be lack of use.

• The territorial limit of registration is:

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the registration date.

• Marking is not compulsory for registered trademarks, but is advisable because:

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • ®;
  •  Marca Registrada; M.R.

• The use of ® is legally recognized.

• The legal consequences of false or misleading marking are:

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

• To satisfy the use requirement, the amount of use:
  • must be on a commercial scale.

• Use of the trademark must occur in:
  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  • any interested third party.

• Non-use can be excused under the following circumstances:
  • import restrictions;
  • other government policies.

• Resumption of use of a trademark prior to the filing of an action to revoke or cancel that trademark may cure non-use if preparation for the resumption of use began before the registrant was aware that an action had been or was about to be filed.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is:

• The following parties may bring a cancellation action:
  • any interested party

• the owner of an earlier right;
•  Despite Mexico being a first-to-file jurisdiction, it is also possible to bring a cancellation on grounds of earlier use in Mexico or abroad.

• Cancellation actions cannot be filed online.

• The following documentation is required for renewal:
  • declaration of use

• Acceptable proof of use/declaration of use documents are:
  • details of goods/services for which the trademark has been used.

• The first renewal date of a registration is:
  • 10 years from the registration grant date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

• The penalty for late renewal is:
  • the registration lapses.
  •  There is a grace period of six months for renewing a registration after it has lapsed without jeopardizing the trademark rights and with no need to pay additional fees.

• Renewal can be effected online at the following URL:

• At the completion of renewal, a new registration number is not issued.

If you would like to know the trademark registration process of Montserrat ? Click on here!

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