If you´ve already started your entrepreneurial journey and need a registered Trademark in Mexico, IP Consultores can help you to prosecute a Trademark Application before Mexico´s Intellectual Property Office.
If you don’t know about Trademark design, you should review our post: Why is a Trademark necessary? & Keys for Trademark design for understanding some advantages of a registered Trademark and the fundamental concepts of its design.
Before explaining the Trademark registration process at Mexico´s IP Office, you need to know that, at IP Consultores, we work through the strategic development of legal solutions as an element of our services.
Trademark Registration Strategy
At IP Consultores, we´ve formulated a Trademark Registration Strategy in three steps: 1) Before the Trademark application, 2) During the Trademark application, and 3) Post-grant application process.
Before the Trademark Application
When you have your Trademark design, you should seek professional counsel from an Intellectual Property attorney or agent, requesting them counseling for the Trademark registration process.
- Searching previously registered trademarks
This fundamental action allows identifying all the registered trademarks. In this way, you will be sure there isn´t any similar Trademark to yours.
Among the legal consequences that could arise due to a deficient Trademark searching, we highlight two: 1) someone could manifest opposition to the Trademark registration process; 2) application disposal if IP Office´s requirements aren´t met.
- Specification of the goods or services
Identification of goods or services is another fundamental action at the previous stage of the Trademark registration process. If it could not be possible the identification all goods or services, it would be necessary to file another application (with an additional fee). Furthermore, it will not be able to use a registered Trademark for goods or services that weren´t submitted by the first time.
- Trademark´s co-ownership
Another relevant action in the previous stage of the Trademark application -if there had more than one applicant- is setting forth Trademark´s co-ownership by an agreement among the applicants. This agreement must contain all rights and obligations of the parties regarding the Trademark´s use.
During the Trademark application
When exhaustive Trademark searching and the Trademark co-ownership agreement have been done, it will be necessary to prosecute a specific procedure before IP Office.
- Submission of the Trademark Application
In Mexico´s IP Office, the submission of the Trademark Application is online (for Conventional Trademarks). This is important because a Non-Conventional Trademark Application submission is in another way.
Even though the grant of a Trademark Certificate doesn´t have any cost, it´s necessary to pay a fee for analyzing a Trademark Application.
- Prosecution of a Trademark Application
When a Trademark Application has been submitted before Mexico´s IP Office, it must be published to identify if the possible grant of registration could infringe on a third party´s rights. Publishing the application allows anybody to manifest opposition.
When Mexico´s IP Office has published the Trademark Application, the Office will examine the compliance of the requirements. If it were incomplete, or there were some defects in the information or documents, the Office will request the applicant.
If the applicant attends the requirements, and there has not been any opposition to the Trademark, a Certificate will be granted. The validity timeframe of this Certificate is for ten years (renewal for periods of the same time) only when all the legal requirements for conservation and renewal are met.
Post-grant Application Process
In Mexico, in Intellectual Property issues, it will always be necessary that the different Certificates are submitted to conservation and renewal administrative processes. Therefore, somebody with a Trademark Certificate must prosecute these two procedures before Mexico´s IP Office.
- Declaration of effective use
The current Mexican IP law states an obligation to declare effective use three years later the Certificate is granted. This procedure is very relevant for avoiding the Certificate´s caducity. Furthermore, the objective is to demonstrate that the registered Trademark has been used by its owners for the goods or services pointed out there.
- Certificate renewal
The owner (or owners) of a registered Trademark must request the renewal of the Certificate before ten years of its expiration. At the same time, it will be necessary to prosecute another Declaration of effective use of the Trademark.
Now you know how a Trademark application is prosecuted in Mexico, at IP Consultores, we advise you to contact us to clarify each question regarding the Trademark registration process since we will be delighted to help you during your entrepreneurial journey in Mexico.
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