Intellectual and industrial property in Mexico. Registry of trademarks.
By – Lic. Cesar López.
Trademarks can be one of the most valuable assets of a company due to the fact that it is through such symbols that the public identifies certain quality and image related directly to the products or services that are being offered.
The use of a trademark allows the creation of an image and to form a particular prestige regarding a product or service; furthermore, it develops and provides advantages with respect to the competition.
Although the law does not require that a trademark is registered, it does state that the exclusive right of use may only be granted by the recording of the trademark. This means that, once the trademark is registered, no other person may use the trademark without the permission of the owner of same. Otherwise, such owner will have the right to demand the payment of royalties or damages and to prevent the use of same.
What is a trademark?
In accordance with the Industrial Property Law, a trademark is any visible sign that distinguishes products or services from others of the same class or species in the market. A trademark can be formed by letters, words or numbers (nominative), figures, designs or logos (innominate), three-dimensional figures (objects such as containers, wrappers, etc.) or by a combination of the above, provided the same are distinctive.
What are the benefits of registering a trademark?
Even though trademarks can be utilized without being registered, when a trademark is registered, Industrial Property Law grants the following benefits to its owner:
- The exclusive right to use the trademark in Mexico.
- The exclusive right to use the caption “Registered Trademark”, the acronym “R.T.” or the symbol “®”.
- The exclusive right to grant the use of same to third parties through licenses or franchises.
- Due to the fact that the trademark is a commercial asset, the same increases the value of the company. The rights over the trademark can also be sold.
- A trademark registry or an application may serve as a supporting document to request its registry abroad.
- It entitles the owner of the trademark to initiate legal actions against third parties who utilize the trademark without authorization, with the option to demand the payment of royalties and damages.
What risks do I have if I do not register my trademark?
The main risk is that a third party registers the trademark before, thereby losing the rights to use same to such third party, and opening the possibility of being required to pay royalties for its use or being prevented to use same.
Since a company´s name is not protected as a trademark as of the date of the incorporation of the company, same should be registered as a trademark if such name will be used to offer services or products.
Can a foreign trademark be registered in Mexico?
Yes, a foreign company or individual may request the registry of a trademark which has been previously registered abroad. However, the foreigner would require designating a domicile in Mexico to receive notices during the procedure.
What is the time frame to obtain the registry of a trademark?
As of the filing of the application, the process to secure a trademark registry ranges from 4 to 7 months approximately, provided no additional documents or information are required.
Once the registry is obtained, same will be in force for ten years starting from the date on which the application was filed, with the possibility of renewing such registry for additional periods of ten years.
Who is the authority in charge of granting a trademark registry?
The Mexican Institute of the Industrial Property (IMPI), which has the authority to receive the applications and grant the trademark registry, as well as to register other distinctive signs such as commercial slogans.