IMPI

Where are the IMPI offices?

 

Mexico City: Arenal # 550, Piso 2, Pueblo Santa María Tepepan, Xochimilco, C.P. 16020

 

Guadalajara, Jalisco: Boulevard Puerta de Hierro No. 5200 Piso 1 Fracc. Puerta de Hierro, Zapopan Jalisco, C.P. 45110

 

Monterrey, Nuevo León: Av. Fundidora # 501, 1er piso, local 66, Edificio Cintermex, Col. Obrera, Monterrey, Nuevo León, C.P. 64010

 

León, Guanajuato: Av. Paseo del Moral # 106, 3er piso, Col. Jardines del Moral, León, Guanajuato, C.P. 37160

 

Mérida, Yucatán: Calle 33 # 501-A, Dept. 3, Col. Gonzalo Guerrero, Mérida, Yucatán, C.P. 97118

 

Puebla, Puebla: Torre JV ll ,Boulevard Atlixcayotl No. 5208, Piso 25 (PH), Col. Unidad Territorial Atlixcayotl, San Andres Cholula, Puebla, C.P. 72197

 

If I do not live in Mexico City, ¿do I need to travel there to carry out the process?

 

It is not needed to travel to Mexico City, as the IMPI has four Regional Offices:

 

Western Regional Office, in Guadalajara, Jalisco: Boulevard Puerta de Hierro # 5200, 1er piso, Fraccionamiento Puerta de Hierro, Zapopan, Jalisco. C.P. 45110. This Office has jurisdiction over the following States:

 

Baja California

 

Baja California Sur

 

Colima

 

Jalisco

 

Nayarit

 

Sinaloa

 

Sonora

 

Northern Regional Office, in Monterrey, Nuevo León: Av. Fundidora # 501, 1er piso, local 66, Edificio Cintermex, Col. Obrera, Monterrey, Nuevo León, C.P. 64010. This office has jurisdiction over the following States:

 

Coahuila

 

Chihuahua

 

Durango

 

Nuevo León

 

Tamaulipas

 

“Bajío” Regional Office, in León, Guanajuato: Av. Paseo del Moral # 106, 3er piso, Col. Jardines del Moral, León, Guanajuato, C.P. 37160. This office has jurisdiction over the following States:

 

Aguascalientes

 

Guanajuato

 

Michoacán

 

Querétaro

 

San Luis Potosí

 

Zacatecas

 

Southeastern Regional Office, in Mérida, Yucatán: Calle 33 # 501-A, Dept. 3, Col. Gonzalo Guerrero, Mérida, Yucatán, C.P. 97118. This office has jurisdiction over the following States:

 

Campeche

 

Chiapas

 

Oaxaca

 

Quintana Roo

 

Tabasco

 

Yucatán

 

Center Regional Office, in Puebla, Puebla: Torre JV ll ,Boulevard Atlixcayotl No. 5208, Piso 25 (PH), Col. Unidad Territorial Atlixcayotl, San Andres Cholula, Puebla, C.P. 72197. This office has jurisdiction over the following States:

 

Guerrero

 

Hidalgo

 

Morelos

 

Puebla

 

Tlaxcala

 

Veracruz

 

If you are not near any of these Cities or States, you can visit any of the Ministry of Economy’s Delegations or Subdelegations. Their addresses can be found in this webpage: http://www.economia.gob.mx/?P=279

 

Office hours?

 

IMPI Office hours are 8:45 a.m.-4:00 p.m., Monday to Friday.

 

The office hours for the Ministry of Economy’s Delegations and Subdelegations varies in each city. Please visit the webpage at http://www.economia.gob.mx/?P=279 for more information.

 

This is the first time I will start the process. Do you provide advisory?

 

Yes. There is a public information window and desk for that purpose.

 

What do I need to register a trademark?

 

You must fill the application form provided by the IMPI and submit the original and three copies with handwritten signatures, attaching the documents listed on the form’s back in compliance with articles 113 and 114 of the Industrial Property Law, and article 5^th of its Regulations.

 

Article 113 of the Industrial Property Law: For the registration of a trademark, an application containing the following information shall be filed in writing with the Institute:

 

I.- the name, nationality and address of the applicant;

 

II.- the distinctive sign constituting the trademark, with a mention of whether it embodies a verbal element or no such element, or is three-dimensional or mixed;

 

III.- the date of first use of the trademark, which may not be subsequently modified, or a mention that it has not been used;  in the absence of any indication, it shall be presumed that the trademark has not been used;

 

IV.- The products or services to which the trademark is to be applied; and

 

V.- All other information provided for in the Regulations under this Law.

 

Article 114 of the Industrial Property Law: The application for registration of a trademark shall be accompanied by proof of payment of the fees payable for processing of the application, registration and issue of the relevant title, and copies of the trademark where it is devoid of a verbal element, three-dimensional or mixed.

 

Article 5th of the Industrial Property Law Regulations: Applications or submissions must be presented to the Institute proper or at the Ministry delegations, in compliance with the following requirements:

 

I.- All items must be properly signed;

 

II.- Use the official printed forms, approved by the Institute and published in the Official Journal and the Gazette, with the number of copies and addenda established in the same form, which must be submitted properly filled and, for magnetic media, in compliance with the guidelines the Institute issues to that effect.

 

If no official forms are required, applications or submissions must be presented in duplicate, stating therein the type of process requested and the information referred to by section V of this article;

 

III.- Attach the addenda necessary for each case, which must be legible and typewritten, printed or engraved by any means;

 

IV.- State a home address to hear about and receive notifications in Mexican national territory;

 

V.- State the application, patent, registry, publication, declaration or file numbers and the receipt date they refer to, except for initial patent or registry submissions;

 

VI.- Attach proof of payment of the corresponding fee;

 

VII.- Attach a corresponding Spanish translation of documents written in a different language accompanying the application or submission;

 

VII.- Attach documents certifying condition of assignees, standing of agents or legal representatives, and

 

IX.- Attach the legalization of foreign documents, where needed.

 

Applications and submissions must be filed separately for each subject, except for: license or transfer registries under the terms of articles 62, 63, 137 and 143 of the Law; transfer of rights registries where there are unregistered intermediate transfers, and those related to the same subject.

 

When Applications or submissions do not comply with the requirements established in sections I to VI, VII and IX above, the Institute will request applicants or plaintiffs to rectify them within a two-month period. Where the requirement is not met, the applications or submissions shall be dismissed forthwith.

 

Where the applications or submissions fail to comply with the requirement in section VII above, applicants or plaintiffs must, without prompting from the Institute, file the corresponding translation of exhibited documents within two months of the date when they are submitted. Where the applicants or plaintiffs fail to present the translation within the stipulated period, the applications or submissions shall be dismissed forthwith.

 

Applications and submissions filed by mail, courier services or equivalents will be regarded as received on the date when they are effectively delivered to the Institute.

 

Applications or submissions may be filed by facsimile telephonic transmission, as long as the application or submission and original addenda, with attached proof of payment of corresponding fees and acknowledgement of receipt of facsimile transmission, are filed at the Institute offices the next day after the transmission. In this case, it is sufficient for the facsimile transmission to include the application or submission.

 

How much does it cost?

 

The cost for registering a trademark is $2,167.83 plus $325.17 VAT, payable in any branch office of the banks BBVA Bancomer, HSBC or Scotiabank, using the standard payment form provided by the IMPI in any of its offices, or you can enter payment via the computer in the following webpage: https://eservicios.impi.gob.mx

 

In the different State, this form is provided by the Ministry of Economy Delegations and Sub-delegations.

 

What is the difference between a trademark, a collective trademark, a commercial name and an advertising slogan?

 

Trademark.- Visible sign by which products or services are distinguished from others of the same type.

 

Article 88 of the Industrial Property Law: A trademark is understood as being any visible sign that distinguishes products or services of the same type from others of the same type or category on the market.

 

Collective trademark.- It is the trademark of a legally incorporated associations or groups of producers, manufacturers, traders or providers of services to distinguish the products or services of their members from those of third parties not belonging to said associations or groups.

 

Article 96 of the Industrial Property Law.- Legally incorporated associations or groups of producers, manufacturers, traders or providers of services may apply for registration of a collective trademark to distinguish the products or services of their members on the market from those of third parties.

 

Article 98 of the Industrial Property Law: The collective trademark may not be transferred to third parties, and its use shall be reserved for association members.

 

In the absence of special provisions, collective trademarks shall be governed by the provisions of this Law that relate to trademarks.

 

Advertising slogan.- A sentence or statement by which products, services or establishments are made known to the public so that they may be distinguished from others of the same kind.

 

Article 100 of the Industrial Property Law: Sentences or statements the purpose of which is to make commercial, industrial or service establishments or businesses, products or services known to the public so that they may be distinguished from others of the same kind shall be considered advertising slogans.

 

Commercial name.- Name adopted to distinguish establishments from others with the same or similar line of business.

 

The publication of the latter covers only the geographical area of the actual clients, unlike other definitions for which protections is nationwide.

 

Article 105 of the Industrial Property Law: The commercial name of an industrial, commercial or service firm or establishment and the right to its exclusive use shall be protected without the need for registration. The protection shall cover the geographical area of the actual clients of the firm or establishment to which the commercial name is applied, and shall extend to the entire Republic if the name is widely and consistently publicized at the national level.

 

Article 106 of the Industrial Property Law: Any person using a commercial name may apply to the Institute for its publication in the Gazette. Such publication shall produce the effect of establishing the presumption of good faith in the adoption and use of the commercial name.

 

Article 109 of the Industrial Property Law: Commercial names that lack elements distinguishing the firm or business involved from others of the same kind, and those that infringe such provisions contained in Article 90 of this Law as are applicable, shall not be published.

 

How much does registering and publicizing an advertising slogan cost?

 

The cost is $358.26 plus $53.73 VAT, for a $411.99 total, payable in any branch office of the banks BBVA Bancomer, HSBC or Scotiabank, using the standard payment form for services provided by the IMPI in any of its offices, or if you prefer you can enter payment via the computer in the following webpage: https://eservicios.impi.gob.mx

 

In the different State, this form is provided by the Ministry of Economy Delegations and Sub-delegations.

 

How do I register a Company’s name?

 

You can register it as a trademark of services, for which you must fill the request using the company’s name as a distinctive sign.

 

There are 2 or more holders for the trademark; should we designate "collective trademark" in the application form?

 

No, because a collective trademark refers to legally incorporated associations or groups of producers, manufacturers traders or providers of service.

 

They must designate “trademark”, list the names of all holders and the rules agreed to for the use and licensing of the trademark and the transfer of rights in it shall be filed together with the application. If a common representative is not specified, it shall be understood that the first person mentioned is the representative.

 

Article 116 of the Industrial Property Law: Where the trademark is applied for in the name of two or more persons, the rules agreed upon between the applicants regarding the use and licensing of the trademark and the transfer of rights in it shall be filed together with the application.

 

Article 58 of the Industrial Property Law Regulations: The applicants must negotiate by written agreement the rules referred to in article 116 of the Law.

 

The rules must also include provisions about the limitation of products or services, licensing, cancellation as referred to in article 154 of the Law, and common representation.

 

Article 182 of the Industrial Property Law: When an application or submission is filed by several natural persons, the relevant document shall specify which of them is the common representative. Failing that, it shall be understood that the first person mentioned is the representative.

 

What is the difference between a patent and a trademark?

 

A patent is used to protect an original INVENTION and the registration of the trademark protects a DISTINCTIVE SIGN (name, logo, slogan, etc.)

 

Article 15 of the Industrial Property Law: Any human creation that allows matter or energy existing in nature to be transformed for use by man for the satisfaction of his specific needs shall be considered an invention.

 

Article 16 of the Industrial Property Law: Inventions that are novel, the result of an inventive step and industrially applicable under the terms of this Law shall be patentable, with the exception of:

 

I.- Essentially biological processes for obtaining, reproducing and propagating plants and animals;

 

II.- Biological and genetic material as found in nature;

 

III.- Animal breeds;

 

IV.- The human body and the living matter constituting it; and

 

V.- Plant varieties.

 

Article 88 of the Industrial Property Law: A trademark is understood as being any visible sign that distinguishes products or services of the same type from others of the same type or category on the market.

 

Is it necessary to perform a phonetic search before filing a registry application?

 

No, but it is nonetheless recommended, as such a search could reveal whether other registered or in-process trademarks are the same or similar phonetically, in writing or design to that which you intend to register. The search result is merely informative; that is, it is not a guarantee of registration.

 

How much does the search cost?

 

The cost is $98.26 plus $14.73 VAT, for a $112.99 total, payable in any branch office of the banks BBVA Bancomer, HSBC or Scotiabank, using the standard payment form for services provided by the IMPI in any of its offices, or if you prefer you can enter payment via the computer in the following webpage: https://eservicios.impi.gob.mx

 

In the different State, this form is provided by the Ministry of Economy Delegations and Sub-delegations.

 

Is there a form to request the search?

 

You can request a search with a free format application. There is no formality for writing such request; you only need to state the denomination you wish to protect as a trademark, as well as indicate the line of business that describes the products or services to distinguish. Where this includes a graphical representation, attach it and include your name and signature.

 

How do I apply the 50% reduction to micro and small businesses as the payment form declares?

 

This reduction only applies for patent applications, not for trademarks.

 

Is a trademark register statewide, national or international?

 

A registration of trademark at IMPI is nationwide?

 

I can’t start the process personally. Can I send someone? What do I need?

 

Yes, you can send someone to submit documentation. However, if you wish somebody else to represent you to hear and receive notifications and present any kind of submission, you must sign a power of attorney with, along your name and signature, the names and addresses of two witnesses. If the power is granted on behalf of a corporate entity (company, civil associations, civil code partnerships, etc.), you must include the number of the public deed where these powers are conferred.

 

Article 181 of the Industrial Property Law: When applications and submissions are filed through an agent, the agent shall prove his status:

 

I.- In a simple power of attorney signed before two witnesses if the principal is a natural person;

 

II.- In a simple power of attorney signed before two witnesses if, in the case of legal entities, the case involves applications for patents or registrations or the registration of licenses or transfers of licenses.

 

In the latter case the power of attorney shall specify that the person granting it is invested with the power to do so, and shall quote the instrument by which that power is conferred;

 

III. In cases not covered by the previous subparagraph, in a public instrument or power of attorney with authentication of signatures before a notary or public broker when a Mexican legal entity is involved, the legal existence of the latter and the powers of the grantor having also to be verified; and

 

IV. In cases not covered by subparagraph II, in a power of attorney granted under the applicable legislation of the place in which it is granted or in accordance with international treaties where the principal is a foreign legal entity. When in such a power of attorney proof is given of the legal existence of the legal entity in the name of which the power is granted, and of the grantor’s right to confer said power, the validity of the power shall be presumed in the absence of proof to the contrary.

 

In each file processed, evidence shall be given of the legal status of the applicant or party filing the submission; however, it shall be sufficient to submit a plain copy of the record of registration if the power has been entered in the General Register of Powers kept by the Institute.

 

Can I download the forms from the Internet?

 

The application forms for trademark/collective trademark, advertising slogan and commercial name can be downloaded from IMPI’s website:

 

http://www.impi.gob.mx/index.php?option=com_content&task=view&id=164&Itemid=209 (impi-00-006, DOC and PDF versions)

 

The renewal form may also be downloaded from IMPI’s website:

 

http://www.impi.gob.mx/index.php?option=com_content&task=view&id=164&Itemid=209 (impi-00-07, DOC and PDF versions)

 

Both can be found in Tramitanet, by agency (Ministry of Economy - Mexican Institute of Industrial Property):

 

http://www.apps.cofemer.gob.mx/buscador/nuevo_tree.asp?org=IMPI&page=1

 

The payment form must be requested directly from the Institute.

 

There is no search request form.

 

Forms may not be modified.

 

What are the classes by which the products or services are classified? How can I classify them correctly?

 

There are 45 classes, 34 of which refer to products and 11 for services. Despite the headers of the International Classification of Goods and Services are transcribed below, it must be noted that there exists a list of goods and services derived from said International Classification, published in extra issues 52 and 53 of the Industrial Property Gazette.

 

If you cannot find the product or service in the following headers, visit IMPI’s offices to browse the full list or consult the visitor support staff.

 

GOODS

 

Class 01

 

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives (glues) used in industry.

 

Class 02

 

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

 

Class 03

 

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

 

Class 04

 

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

 

Class 05

 

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

 

Class 06

 

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

 

Class 07

 

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

 

Class 08

 

Hand tools and implements (hand-operated); cutlery; side arms; razors.

 

Class 09

 

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

 

Class 10

 

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

 

Class 11

 

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

 

Class 12

 

Vehicles; apparatus for locomotion by land, air or water.

 

Class 13

 

Firearms; ammunition and projectiles; explosives; fireworks.

 

Class 14

 

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

 

Class 15

 

Musical instruments.

 

Class 16

 

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

 

Class 17

 

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

 

Class 18

 

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

 

Class 19

 

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

 

Class 20

 

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

 

Class 21

 

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

 

Class 22

 

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

 

Class 23

 

Yarns and threads, for textile use.

 

Class 24

 

Textiles and textile goods, not included in other classes; bed and table covers.

 

Class 25

 

Clothing, footwear, headgear.

 

Class 26

 

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

 

Class 27

 

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

 

Class 28

 

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

 

Class 29

 

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

 

Class 30

 

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

 

Class 31

 

Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

 

Class 32

 

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

 

Class 33

 

Alcoholic beverages (except beers).

 

Class 34

 

Tobacco; smokers' articles; matches.

 

SERVICES

 

Class 35

 

Advertising; business management; business administration; office functions.

 

Class 36

 

Insurance; financial affairs; monetary affairs; real estate affairs.

 

Class 37

 

Building construction; repair; installation services.

 

Class 38

 

Telecommunications.

 

Class 39

 

Transport; packaging and storage of goods; travel arrangement.

 

Class 40

 

Treatment of materials.

 

Class 41

 

Education; providing of training; entertainment; sporting and cultural activities.

 

Class 42

 

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

 

Class 43

 

Services for providing food and drink; temporary accommodation.

 

Class 44

 

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

 

Class 45

 

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

 

How long does it approximately take for a registry to be granted?

 

If a distinctive sign that is eligible for registration is submitted through a correct application with all required documents attached, your trademark or advertising slogan will be registered or your commercial name published in no more than a 6 months period, in accordance with the “Agreement whereby the rules or criteria for the solution of various procedures before the Mexican Institute of Industrial Property", published in the Official Journal of the Federation on August 9^th, 2004.

 

Can I submit documentation by fax or by e-mail?

 

Not by e-mail. You can by fax, as long as you submit the original documentation to IMPI on the next work day; in this case, the legal date will be that by when the fax was submitted.

 

Article 5th of the Industrial Property Law Regulations: Applications or submissions must be presented to the Institute proper or at the Ministry delegations, in compliance with the following requirements:

 

I.- All items must be properly signed;

 

II.- Use the official printed forms, approved by the Institute and published in the Official Journal and the Gazette, with the number of copies and addenda established in the same form, which must be submitted properly filled and, for magnetic media, in compliance with the guidelines the Institute issues to that effect.

 

If no official forms are required, applications or submissions must be presented in duplicate, stating therein the type of process requested and the information referred to by section V of this article;

 

III.- Attach the addenda necessary for each case, which must be legible and typewritten, printed or engraved by any means;

 

IV.- State a home address to hear about and receive notifications in Mexican national territory;

 

V.- State the application, patent, registry, publication, declaration or file numbers and the receipt date they refer to, except for initial patent or registry submissions;

 

VI.- Attach proof of payment of the corresponding fee;

 

VII.- Attach a corresponding Spanish translation of documents written in a different language accompanying the application or submission;

 

VII.- Attach documents certifying condition of assignees, standing of agents or legal representatives, and

 

IX.- Attach the legalization of foreign documents, where needed.

 

Applications and submissions must be filed separately for each subject, except for: license or transfer registries under the terms of articles 62, 63, 137 and 143 of the Law; transfer of rights registries where there are unregistered intermediate transfers, and those related to the same subject.

 

When Applications or submissions do not comply with the requirements established in sections I to VI, VII and IX above, the Institute will request applicants or plaintiffs to rectify them within a two-month period. Where the requirement is not met, the applications or submissions shall be dismissed forthwith.

 

Where the applications or submissions fail to comply with the requirement in section VII above, applicants or plaintiffs must, without prompting from the Institute, file the corresponding translation of exhibited documents within two months of the date when they are submitted. Where the applicants or plaintiffs fail to present the translation within the stipulated period, the applications or submissions shall be dismissed forthwith.

 

Applications and submissions filed by mail, courier services or equivalents will be regarded as received on the date when they are effectively delivered to the Institute.

 

Applications or submissions may be filed by facsimile telephonic transmission, as long as the application or submission and original addenda, with attached proof of payment of corresponding fees and acknowledgement of receipt of facsimile transmission, are filed at the Institute offices the next day after the transmission. In this case, it is sufficient for the facsimile transmission to include the application or submission.

 

After I submit my application to register a trademark or advertising slogan, or to publish a commercial name, will you send me any type of notification?

 

Yes; it will be sent to you by certified mail to the address you have on file.

 

Article 13^th of the Industrial Property Law Regulations: The rulings, requirements and other actions by the Institute will be notified to applicants or interested third parties by certified mail with acknowledgment of receipt to the addresses defined beforehand. Notifications can also be given personally at the stated address, the Institute’s offices or by publishing in the Gazette.

 

The Institute may employ other means of notification, such as courier services, which will carry particular charges for the person to anyone requesting it.

 

Personal notification to the addresses of applicants, interested parties or legal representatives will only be carried out, in addition to the case covered in article 72 of the Law, in cases the Institute deems convenient.

 

Personal notification at the Institute’s offices may be carried out where the applicant, interested third party. agents or persons authorized under the terms of article 6, subparagraph V of these Regulations, present themselves personally at the offices.

 

Personal notifications and those carried out by certified mail with acknowledgment of receipt will take effect from the day that those interested are notified.

 

Terms will start the next day after the notification takes effect.

 

For how long is a registration valid?

 

Ten years from the date when the application was submitted, renewable in terms of equal duration.

 

Article 95 of the Industrial Property Law: The registration of a trademark shall have a term of 10 years, starting from the filing date of the application, and may be renewed for periods of the same duration.

 

Does the application guarantee my trademark’s registration?

 

No, as it must be subject to a study to determine the viability of its registration, in accordance to the provisions in the Industrial Property Law and its Regulations.

 

Article 119 of the Industrial Property Law: Once the application has been received, it and the documentation filed shall undergo a substance examination to determine whether the requirements specified in this Law and in the Regulations thereunder have been met.

 

Article 122 of the Industrial Property Law: On completion of the substance examination, a substantive examination shall be made to determine whether the trademark is eligible for registration under this Law.

 

If the application or documentation submitted does not comply with legal or regulatory requirements, if there is any impediment to the registration of the trademark or if there is prior art, the Institute shall inform the applicant accordingly in writing, allowing him a period of two months within which to rectify the errors or omissions that he has committed and to make whatever statement best serves his interests in relation to the impediments and prior art cited. If the applicant does not respond within the time allowed, his application shall be considered abandoned.

 

Article 125 of the Industrial Property Law: Once the application has been processed and the legal and regulatory requirements have been complied with, the title shall be issued.

 

Where the Institute rejects registration of the trademark, it shall inform the applicant in writing, stating the reasoning and legal grounds underlying its decision.

 

If my trademark is accepted, do I receive a receipt?

 

Yes; you are given a “Trademark Registration Certificate" with your and your trademark’s information and the registration number.

 

Article 125 of the Industrial Property Law: Once the application has been processed and the legal and regulatory requirements have been complied with, the title shall be issued.

 

Where the Institute rejects registration of the trademark, it shall inform the applicant in writing, stating the reasoning and legal grounds underlying its decision.

 

Article 126 of the Industrial Property Law: The Institute shall issue a certificate for each trademark as proof of its registration. The certificate shall include a specimen of the trademark and shall specify the following:

 

I. Registration number of the trademark;

 

II.- Distinctive sign constituting the trademark, mentioning whether it is verbal, non-verbal, three-dimensional or mixed;

 

III.- Products or services to which the trademark will be applied;

 

IV.- Name and address of the owner;

 

V.- Location of the establishment, where applicable;

 

VI.- Filing date of the application and dates of recognized priority and first use, if any, and issue; and

 

VII.- Term of the trademark.

 

I made a mistake when indicating my trademark in the application, can I correct it?

 

No, because if you did, in accordance to article 61 of the Regulations of the Industrial Property Law, the application would be subject to a new process, so you would have to pay again for its study, and its legal date would be moved to the day when you submit the respective receipt.

 

Article 61 of the Industrial Property Law Regulations: If, after the application for registration is submitted, the applicant modifies the distinctive sign, increases the number of products or services for which the registration applies, replaces or changes the product or services in the application, then the application will be considered as a new one and subject to a new process; the corresponding fee must be paid in full and the legal and regulatory requirements that apply must be met. In this case, the date of presentation of the modified application will be considered the same as the presentation of the submission by which the applicant would modify the original application.

 

I made a mistake when indicating the goods or services in my application, can I correct them?

 

No, because if you did, in accordance to article 61 of the Regulations of the Industrial Property Law, the application would be subject to a new process, so you would have to pay again for its study, and its legal date would be moved to the day when you submit the respective receipt.

 

Article 61 of the Industrial Property Law Regulations: If, after the application for registration is submitted, the applicant modifies the distinctive sign, increases the number of products or services for which the registration applies, replaces or changes the product or services in the application, then the application will be considered as a new one and subject to a new process; the corresponding fee must be paid in full and the legal and regulatory requirements that apply must be met. In this case, the date of presentation of the modified application will be considered the same as the presentation of the submission by which the applicant would modify the original application.

 

When and how can I renew my trademark?

 

Trademark renewal can be performed six months before or after its expiration, in accordance with article 134 of the Industrial Property Law. Renewal must be requested via the form provided by the IMPI, along the corresponding proof of payment.

 

Article 133 of the Industrial Property Law: Renewal of the registration of a trademark shall be requested by the owner six months prior to the expiration of its term. However, the Institute shall nevertheless process requests that are filed within six months of the expiry of the term of registration. Once that period expires without any request for renewal having been filed, the registration shall lapse.

 

Article 134 of the Industrial Property Law: Renewal of the registration of a trademark shall proceed only if the person concerned submits proof of payment of the appropriate fee and makes a sworn statement in writing attesting his use of the trademark on at least one of the goods or services to which it is applied, such use not having been interrupted, without just cause, for a period equal to or longer than that provided for in Article 130 of this Law.

 

What is a license of use and how is it processed?

 

It is the authorization the owner grants to a natural or legal person to use a trademark that is registered or in process of being registered. License registration must be requested through a free format application, in accordance with the requirements found in articles 5 and 10 of the Regulations of the Industrial Property Law. Registration costs $349.57 plus $52.43 VAT, for a $402.00 total, payable in any branch office of the banks BBVA Bancomer, HSBC or Scotiabank, using the standard payment form for services provided by the IMPI in any of its offices, or if you prefer you can enter payment via the computer in the following webpage: https://eservicios.impi.gob.mx

 

In the different State, this form is provided by the Ministry of Economy Delegations and Sub-delegations.

 

Which articles of the Industrial Property Law and its Regulations are important that I know?

 

Regarding the process for the registration of trademarks, it is important to know the following articles:

 

From the Industrial Property Law: 1^st, 2^nd, 3^rd, 4^th, 8^th, from the 87^th to the 155^th, and from the 179^th to the 186^th.

 

From the Regulations of the Industrial Property Law: 1^st, 2^nd, 4^th, 5^th, 6^th, 8^th, 10^th, 11^th, 13^th, 14^th, 15^th, 16^th, 18^th, 19^th, 20^th, from the 53^rd to the 65^th, and 67^th.