✅ How to avoid extra fees when filing in Mexico
When filing in Mexico with Bonamark only one type of extra fees might be possible. It is a price to respond to an objection if there is a similar mark or if your mark is unregistrable for a different reason. How to avoid them? Ordering our Extensive Study virtually nullifies this risk.
The total cost to register a trademark in Mexico can vary depending on several factors, such as the number of classes of goods and services for which you are registering the mark, and whether you choose to use an attorney or agent to file the application. Our fees are US$439 (The official fee of US$150 is included in this price.).
✅ How much does an extra class cost?
An extra class is filed as a separate application for a discounted fee of US$419. The official fee of US$150 is included in this price.
✅ What documents are required in Mexico?
No additional documents are required.
Official Trademark Office in Mexico
Name of Office: Mexican Institute of Industrial Property
Address: Periférico Sur No. 3106 Piso 9, Col. Jardines del Pedregal Mexico, D.F., C.P. 01900
Phone number: (52 55) 53 34 07 00
Trademark Search in Mexico will allow you to see all the trademarks available for the country.
The service offers a comprehensive and exhaustive study of the property you're interested in. Regardless of whether it's a slogan, image, or different intellectual property, our staff can give you a definitive answer regarding its availability in no time. Additionally, our service goes out of its way to ensure you're up to date at every intersection of the project.
Click Read More for "Mexico trademark 101"
How to apply trademark in Mexico
✅ Click here to read general information about trademark registration process in Mexico
To register a trademark in Mexico, you will need to follow these steps:
1. Conduct a trademark search to ensure that the mark you wish to register is available and not already in use by someone else. This can be done by searching the Mexican Trademark Office (IMPI) database.
2. Prepare the necessary documents, including a representation of the mark, a list of the goods and services for which the mark will be used, and any other required information.
3. File the application with the Mexican Trademark Office (IMPI). The application can be filed online or in person.
4. Pay the required fee for the application.
5. Wait for the application to be examined and approved by the IMPI. The examination process can take several months.
6. Once your trademark is approved, it will be published in the Official Gazette.
7. After the publication, any interested party has a 30 working days period to file an opposition.
8. Once the opposition period is over, or if no opposition is filed, your trademark will be registered and a certificate of registration will be issued.
Note that it is recommended that you use a trademark attorney to help you through the process, as the process can be complex and time-consuming. If you hire us, all you have to do is to pay the fee above which includes the government fee and we will handle everything.
As a result of trademark search, you will get an overview of the availability of your trademark at a given time. Because so many trademarks are being filed each day, this is only a rough estimate of what is available at a given time. After trademark search is complete our attorney will go to great lengths to offer accurate forecasts of a given properties availability in the country. If the mark is available, you will be able to move on the registration phase.
Trademark Search in Mexico
There are several ways to conduct a trademark search in Mexico:
Online Trademark Search: You can search for existing trademarks using the online database of the Mexican Trademark Office (IMPI). This database is available on the IMPI website and can be searched by mark, owner, or class. You can request the search on this page.
Professional Trademark Search or Study: Another way to conduct a trademark search in Mexico is to hire Bonamark to perform the search on your behalf. We will have access to more specialized databases and can provide you with a detailed report of the search results.
When conducting a trademark search, it is important to search for similar marks that are already registered or pending registration in the same class of goods or services as the mark you wish to register. The search should also be done in the different forms, logo, stylized and non-stylized versions of the mark. Additionally, it is important to check for trademarks that have been abandoned, cancelled or expired, as they can be available for registration again.
How to search trademarks online in Mexico?
You can request the free search on this page. However, if you want to do this your way, please find below the complete instruction.
To search for a trademark online in Mexico, you can use the online database of the Mexican Trademark Office (IMPI). The database is available on the IMPI website, and you can search for trademarks by mark, owner, or class.
Here are the steps to conduct an online trademark search in Mexico:
- Go to the Mexican Trademark Office (IMPI) website. Please note that the website is in Spanish, but you can use Google Translate or a similar tool.
- Click on the link to access the trademark search database, typically labeled as "Trademarks" or "Trademarks Search" (Busqueda de marcas or Buscador de marcas in Spanish)
- Select the option to search by mark, owner, or class. You can do a search by word, phrase or image.
- Enter the mark, owner name, or class number you wish to search for and click on the search button.
- Review the search results, which will show you a list of trademarks that match your search criteria.
- You can click on each result to see more details about the trademark, including the registration number, the owner's name, the date of registration, and the goods/services for which the mark is registered.
- You can narrow down the search by adding more specific information or criteria, such as the status of the trademark, the registration date, or the class of goods/services.
It's important to note that the search results may not be exhaustive, and it's recommended to conduct a comprehensive search (Extensive Study) that includes a professional search firm or a trademark attorney to make sure that the mark is available.
What is the trademark database of Mexico?
The trademark database of Mexico is a collection of information on all trademarks registered with the Mexican Trademark Office (IMPI). It is available online on the IMPI website and it is called the "Sistema de Consulta de Marcas" (Trademark Consultation System) and it's open to the public.
The database contains information on all trademarks registered in Mexico, including the mark itself, the owner of the mark, the goods and services for which the mark is registered, the date of registration, the status of the trademark and any other relevant information. The Mexican trademark database can be searched by mark, owner, or class.
It can be used to conduct a trademark search to check the availability of a mark before filing an application for registration, to monitor the status of a trademark application, and to check if a trademark is still in force.
How to find a list of Mexican trademarks
To find a list of Mexico trademarks, you can use the online database of the Mexican Trademark Office (IMPI).
Is Mexico first to register or first to use country?
Mexico follows the "first-to-file" system for trademark registration. This means that the first person or entity to file a trademark application with the Mexican Trademark Office (IMPI) will be granted the exclusive right to use the mark, regardless of who was the first to use it.
This system is based on the idea that the person or entity who is the first to file an application for a trademark has the right to use it, as they have demonstrated an intention to use it in the future.
The New trademark law in Mexico
In Mexico, a new trademark law was passed in August 2019, which came into effect on August 10th, 2019. This new law, also known as the Industrial Property Law (Ley de Propiedad Industrial), made significant changes to the country's trademark registration and enforcement system.
The new trademark law in Mexico includes several important changes, including:
- Streamlined application process: The new law simplifies the application process by reducing the number of required documents and allowing for online filing.
- Simplified opposition procedures: The new law allows for more expedited opposition procedures, making it easier and faster to challenge a trademark application.
- Increased penalties for infringement: The new law increases the penalties for trademark infringement, making it a more severe crime.
- Introduction of the International Classification of goods and services: The new law introduces the International Classification of goods and services (Nice Classification) to Mexico's trademark system, which is used by the majority of countries in the world.
- Introduction of the Madrid Protocol: Mexico has joined the Madrid Protocol which allows for the registration of trademarks in multiple countries through a single application process.
- Introduction of the non-use cancellation: The new law allows for the cancellation of a trademark registration for non-use after a period of three consecutive years.
- Introduction of the coexistence agreements: The new law allows for the use of coexistence agreements between owners of trademarks, which will allow them to use their marks in parallel without any conflict.
- Introduction of the trademark cancellation for non-payment of the renewal fees.
These changes are aimed at modernizing and streamlining the trademark registration and enforcement process, making it more efficient and effective for businesses and entrepreneurs. It also allows for more harmonization with international standards and best practices.
Can I file a trademark in Mexico as a US citizen?
Yes, as a U.S. citizen, you can file a trademark application in Mexico as long as you are represented by a local attorney. Also, if you have a CURP (a Mexican ID number) and a local address you do not need an attorney. Mexico, like most countries, allows for foreign applicants to file for trademark registration.
You can file a trademark application in Mexico either by hiring us and we submit the application directly at the Mexican Trademark Office (IMPI) or through the Madrid System via a national or regional office, such as the USPTO, that is a member of the Madrid Protocol. The Madrid Protocol allows for the registration of trademarks in multiple countries through a single application process.
It is important to note that the application must be filed in Spanish and that it is recommended to use a trademark attorney provided by Bonamark to help you through the process, as the process can be complex and time-consuming, and to ensure that the application meets all the necessary requirements.
Are US trademarks valid in Mexico?
U.S. trademarks are not automatically valid in Mexico, but you can file an application to register the same mark in Mexico to protect it there.
Mexico and the United States do not have a specific agreement that recognizes each other's trademarks, so a U.S. trademark registration alone does not provide protection in Mexico. However, as a U.S. citizen, you can file a trademark application in Mexico, as long as you have an attorney (like Bonamark) in Mexico.
It's important to note that even though you have a trademark registration in the U.S. it does not guarantee that the same mark will be registered in Mexico, as the Mexican Trademark Office (IMPI) will conduct a full examination to determine if the mark meets all the necessary requirements, including distinctiveness and the absence of any conflicting marks in Mexico.
It's also important to monitor your trademark in Mexico, as once registered, it needs to be renewed every 10 years and it's important to check that it's being used, as the Mexican law allows for the cancellation of a trademark for non-use after 3 consecutive years.
Is a Mexico trademark enforceable in US?
A Mexico trademark registration is not automatically enforceable in the United States. In order to enforce your trademark in the United States, you will need to register it with the United States Patent and Trademark Office (USPTO).
It's important to note that having a trademark registration in Mexico does not prevent others from registering the same or similar marks in the United States. Therefore, it's advisable to file for trademark registration in both countries to protect your rights and prevent others from using your mark.
Can you directly apply for Mexico trademark online?
Yes, you can apply for a trademark registration in Mexico online through the Mexican Trademark Office (IMPI) website if you have an address in Mexico, know Spanish and have a CURP (a local ID number). This new online system allows you to file your application, pay the fee and submit all the necessary documents electronically, which makes the process more efficient and faster.
To file a trademark application online in Mexico, you will need to:
- Create an account on the Mexican Trademark Office (IMPI) website. You will need a local ID number for this.
- Fill out the online application form with the necessary information, such as the mark, the list of goods and services, and the applicant's information.
- Upload the necessary documents, including a representation of the mark, and any other required information.
- Pay the application fee online using a credit card or electronic funds transfer.
- Submit the application and wait for the examination process to be completed.
It's important to note that the application must be filed in Spanish and that it is recommended to use a trademark attorney or agent to help you through the process, as the process can be complex and time-consuming, and to ensure that the application meets all the necessary requirements.
Fast trademark registration for Amazon FBA in Mexico
Amazon FBA (Fulfillment by Amazon) is a service offered by Amazon that allows sellers to store their products in Amazon's warehouses and have Amazon handle the shipping and customer service.
To register a trademark in Mexico as an Amazon FBA seller, you will need to follow the standard process for trademark registration as outlined by the Mexican Trademark Office (IMPI). This includes:
- Conducting a trademark search to ensure that the mark you wish to register is available.
- Preparing and submitting a trademark application, including a representation of the mark, a list of goods and services, and information about the applicant.
- Paying the application fee.
- Waiting for the examination process to be completed.
It's important to note that the process of trademark registration can take several months. But once your mark is filed within 7 days Bonamark can provide you with an Amazon Verification Number.
It's important to register your trademark as soon as possible, as it can take time for the registration process to be completed, and it's better to have your trademark registered before starting to sell under that name on Amazon FBA. Additionally, it's important to keep your trademark registration updated, by paying the renewal fees on time, to prevent others from using your trademark.
Trademark Renewals in Mexico
General overview of trademark renewal in Mexico
To renew a trademark in Mexico, you will need to follow these steps:
1. Check the expiration date: Before the renewal date, you should check the expiration date of your trademark registration with the Mexican Trademark Office (IMPI) to ensure that you renew it on time.
2. Prepare the necessary documents: To renew your trademark, you will need to provide the following information:
- the registration number of your trademark
- the name and address of the trademark owner
- the list of goods and services for which the mark is registered
- payment of the renewal fee
- File the renewal application: You can file the renewal application with the Mexican Trademark Office (IMPI) either online or by mail. It is recommended that you use a trademark attorney or agent to file the application on your behalf.
3. Pay the fee.The fee can vary depending on the class of goods and services.
4. Wait for the renewal to be processed: The renewal process can take up to 1 month. Once the renewal is approved, you will receive a renewed certificate of registration.
5. It's important to note that the renewal must be made before the expiration date, otherwise it will be considered abandoned, and the mark will be cancelled
The trademark registration in Mexico is valid for 10 years from the granting date, as in many other countries. However, there is a significant difference from other countries in maintaining trademark registration in Mexico – it is the "Declaration of Actual and Effective Use" (DoU).
✅ Click here to read about Renewing your mark
A trademark is renewable for a period of 10 years and valid from the registration date.
- A mark can be renewed within 6 months before the expiration of the current trademark registration.
Please contact us using the following form in order to request a trademark renewal. The process is rather simple, our attorney will become your representative and will pay the renewal fee.
The process takes approximately 1 months, and a Renewal Certificate is issued.
Trademark renewal fee
The price is 519$ for one class. The government fee is included in the price.
How to apply
Documents required: We only need a DoU (Declaration of Use) in order to proceed with the service.
What if the deadline is missed?
Grace period is 6 months after the expiration date.
After the end of the grace period the mark expires without any ways of restoration, a new mark must be filed.
📅 Renewal Date Calculation (example):
- Filing date: 01.09.2019
- Registration date: 01.09.2021
- Expiration date: 01.09.2031
- The earliest date for filing a renewal: 01.03.2031
- Grace period starts and ends: 01.09.2031-01.03.2032
Please be informed that the dates are determined to the best of our knowledge and we take no responsibility if the calculations are incorrect. We recommend that you contact us with an actual case in order to determine the renewal date with the highest accuracy possible.
Declaration of Use in Mexico
✅ Click here to read about the Declaration of Use in Mexico
What is the Declaration of Use?
This submission to the Mexican Intellectual Property Office confirms that you have been using your trademark in Mexico for registered products. The principal purpose of this requirement is to avoid trademark registrations that their holders are not using.
When should I file the Declaration of Use?
There are two moments when the Declaration of Use must be filed:
- Within 3 months after the 3rd anniversary of the trademark registration.
- The DoU must be submitted every 10 years, simultaneously with the Renewal petition of the trademark registration.
The trademark registration will automatically lapse if this declaration is not filed within the timeframe.
What should be submitted?
In the "Declaration of Actual and Effective Use", the trademark holder must specify the goods or services for which use of the trademark is being declared. The scope of protection of the trademark registration will continue in place for the goods or services for which the actual and effective use has been proclaimed.
The DoU is filed based on the principle of good faith. No proof of use should be filed with the Mexican Institute of Industrial Property (IMPI); it is not mandatory to submit evidence of the use of the trademark when declaring it.
How much does it cost to file a Declaration of Use?
Our price for the submission of the DoU is US$319. Our local attorney will fill and submit all of the required documents for you.