Intellectual Property in Mexico

It would help if you contemplated nearshoring to Mexico only after thoroughly grasping the procedures for registering, defending, and upholding intellectual property rights. The protection of intellectual property (IP) is essential in the modern world and has special significance for American-based businesses that source their goods from Mexico for manufacture.

The most important thing is that Mexico and the United States treat intellectual property rights differently. Protecting your IP requires that you comprehend these distinctions, how IP protections are applied, and what remedies are available to rights holders when trademark infringement happens. That being said, Mexico made several enhanced pledges to preserve the intellectual property of businesses from signatory nations with the recent adoption of the United States-Mexico-Canada Agreement (USMCA). The USMCA’s enhanced provisions will provide enterprises with headquarters in the United States with strong IP rights protections during the years.

Brealant helps businesses safeguard their assets in Mexico. Intellectual property law aims to stop the exploitation and abuse of these valuable resources. Due to its complexity, an attorney skilled in Mexican intellectual property laws is needed for this area of the law. In Mexico, Brealant Attorney is in charge of intellectual property law. Before that, they had positions as Specialists at the Mexican Institute of Industrial Property (MIIP) and significant Mexican intellectual property businesses. They developed a thorough knowledge of Mexican IP regulations.

Our Mexico IP services ensure that your patent portfolio and any other intellectual property documentation comply with the WIPO rules governing how intellectual property is structured globally. Our Intellectual Property practices in Mexico include:

  • Copyrights
  • Patents
  • Licensing Agreements
  • Trademarks
  • Trade Secrets
  • Trade dress

Registration process of a trademark

In Mexico, an application has to be filed at the Mexican Institute of Industrial Property (IMPI). Each application involves only one class. Hence, separate applications must be filed for each class, and the same fee applies. Besides, it is important to know that foreign applicants need a local agent.

The application process includes two steps: a formal examination within 4 months and an in-depth examination within 2 months. Additionally, the in-depth examination involves an examination of distinctiveness and a search for prior trademarks. Hence, the processing time from first filing to registration or office action is approximately 4 to 6 months.

To check for updates on the application process, the national trademark database has to be monitored, and so do the corresponding Gazettes, as no notifications will be sent unless there is an official requirement. The trademark application is published once the office has received it within 10 business days in the Gazettes. There is a Gazette for requested applications, abandoned applications, and approved applications. The trademark application is published once the office has received it within 10 business days in the Gazettes.

If the application is approved and thus the trademark is registered in the country, the trademark is then published in the Approved Trademarks Gazette. The title of the trademark is sent digitally to the email address given by the agent.

Period to Oppose: Third parties affected by the application can file an opposition within one month from the publication date in the approved trademarks gazette. The trademark applicant can give a reply within one month. Anyone can write the opposition, not necessarily by a lawyer, as it is an administrative, not legal, process.

Trademark Validity

Trademark registration is valid for 10 years from the date of application and renewable for 10 years. The renewal application process can be done 6 months before the expiration date. However, if the registrant fails to file the renewal on the due date, they still have 6 months after the trademark’s expiration to finish it. The renewal process takes up to 3 months to be granted and must be filed in person, as the renewal form is only obtained at the IMPI offices. Only the renewal form and the payment have to be presented.

The first renewal must be done with the 2nd Declaration of Actual Use (DAU).

Requirement of Use: Declaration of use

Suppose the trademark has not been used within 3 years from registration or for more than 3 years. In that case, it may be subject to cancellation due to non-use, according to the changes in the Law of Industrial Property that took effect in August 2018. An application for the declaration of use has to be filed to validate the use of a trademark only the 3rd year from the date of application and then the 10th year with the first renewal.

The DAU process must be made in person, as the proper form can only be obtained at the IMPI offices. Only the DAU form and the required payment need to be presented. The processing time involves 3 months to be completed and granted.

The first DAU applicant can only file it 3 years after the application date, and the 2nd DAU has to be filed 10 years after the application date. The applicant has 3 months to complete it. Fail to file it; the application will be considered abandoned.