Application for registration

A registrable mark is any visible sign that may serve to identify goods and/or services of the same class in the market. A single letter, a single digit/number, a specific shade of colour or combinations of colours, a sound/audible or smell mark, a geographical name which may create confusion as to the place of origin of the goods/services are not registrable as a trademark.

Trademark protection is available through application/registration. Use does not grant the right to exclusive use but grants a preferential right to register.

Priority must be claimed when filing the application and it is necessary to specify the date, application number and country where the original application was filed at the moment of filing. The certify copy of the application may be filed within three months after filing and it should be translated into Spanish language.

The International Classification according to Nice Agreement is used. Only one class is allowed per application. It is not requested the translation into Spanish language of trademark with a meaning in a foreign language. A disclaimer can be filed for generic or descriptive legends in a trademark label.

The registration can be obtained for class heading or general wording of the goods and/or services; however, it is advisable to include also a specific wording of them. It is not possible to specify the wording "all goods in class.." in the application form either.

The applicant may claim a first use in the application form specifying the exact date of the first use, but it is not required. If a third party has registered a trademark and the new applicant want to remove the earlier trademark from the registry base on prior use either in Mexico or abroad such use must be claimed when filing a cancellation action provided the earlier use has been continuous.

The documents and information needed for filing an application are the following:

- App licants' name.
- Applicants' address.
- Mark
- International Class of Goods & Services.
- Colours claimed.
- Description of goods & services.
- Priority details
- Certified priority document and its Spanish translation.

Although the priority document might be filed at a later stage, it is recommended to file all documents with the application to avoid delays in the registration process and additional cost.

Examination

The Office carries out at its own initiative a formal examination and an examination on absolute and relative grounds. During examination Official Actions might be issued by the Office. A trademark can not be modified during examination but a disclaimer is accepted. Letters of Consent are accepted provided the public is not being misled.

The application is not published for opposition purpose. After registration the trademark is published in the Official Gazette.

The approximate time from the application to registration is between 3-4 months provided all documents were filed at the moment of filling and no objection was issued during the examination.

Use after registration

Use of a registered trademark is required to maintain the rights to the mark and specially to prevent the trademark from being vulnerable to a cancellation action. After registration date the trademark use must take place within a period of three years. The use can not be interrupted for a period longer than three years. The merely trademark advertising, without putting the goods/services on the market, does not constitute valid use.

If the trademark has not met the use requirements any subsequent use will restore rights if a cancellation action has not been initiated before the mark is reused.

Cancellation actions and appeals

Cancellation proceedings can be initiated by any interested party before the Office against a mark that has been registered contrary to the grounds specified in the law that would render a mark unregistrable (absolute grounds), based on prior rights (relative grounds), against a bad faith registration, and due to non-use.

An interested party starting a cancellation action must show that it has "legal interest" to request the cancellation. "Legal interest" may be proven for instance, by filing an application to register a trademark and a previously registered trademark is cited as anticipation.

Office's final decisions may be appealed before the Office itself (administrative appeal) or before the Federal Court of Administrative and Tax Justice (FCATJ). If the appellant chooses to file the administrative appeal, the decision of this action may be appealed at the FCATJ.