INTELLECTUAL PROPERTY RIGHTS IN MEXICO
First Renewal Term
Subsequent Renewal Term
An application for trademark registration has to be filed with the Mexico Institute of Industrial Property, which administers the entire trademark registration process in Mexico.
Mexico follows the International Classification of Goods and Services under the 11th edition of the Nice Agreement.
It is also possible to obtain trademark registration in Mexico through the International Madrid System.
It follows a 'first-to-file’ system, which subjects to presenting evidence of prior use of the mark in the country.
According to the Mexican Law of Industrial Property, multi-class filing is not available in the nation. The Federal Law for the Protection of Industrial Property is not clear on whether multi-class applications will be accepted, and thus, there is a need to have further clarification as and when the corresponding administrative regulation gets issued.
Once an application is filed before the IMPI, they are published for opposition in the Industrial Property Gazette within the next ten (10) working days, granting any interested party a term of one (01) month from the date of publication for opposing the registration.
In Mexico, trademark registration is in full force and effect for ten (10) years with the possibility of filing subsequent renewals indefinitely for successive periods of ten (10) years each. Under the current regime, the ten (10) years are counted from the filing date of the corresponding application. However, for registrations granted under the recently enacted Federal Law for the Protection of Industrial Property, this period of ten (10) years will be counted from the granting date of the registration.
The application for renewal should be filed within six (06) months before the expiration date of registration. A grace period of six (06) months, however, is allowed from the expiration date for the filing of the application for renewal. Upon the expiry of this period, a new application for registration is required.
The Mexican Industrial Property Law is influenced by the main international patent treaties, such as the Paris Convention (in force since 27th July 1976), the Agreement on Trade-Related Aspects of Intellectual Property Rights (in force since 1st January 2000), the Patent Cooperation Treaty (PCT - in force since 1st January 1995), and the Strasbourg Agreement Concerning the International Patent Classification (in force since 26th October 2001).
For seeking patent protection in Mexico, an application has to be filed with the the Mexican Institute of Industrial Property (IMPI), which administers the entire process of patent grant.
In Mexico, an invention that satisfies the conditions of originality, novelty, inventive step, and industrial applicability, subjects to patentability. Process patent and product patent are the two types of patents that can be protected.
The types of patent applications that can be filed include Non-Convention Application and Convention Application.
A Mexican patent is valid for a non-renewable period of twenty (20) years, starting from the filing date of the patent application.
The grant fee and annuities for the first five (05) years should be paid within two (02) months from the receipt of the Notice of Allowance. The succeeding annuities should be paid every five (05) years before the expiry of the anniversary of the filing date. Annuities can be paid in an accumulated manner.
Late payment of the annuities is possible within a grace period of six (06) months after the due date, provided a surcharge is paid.
It is possible to obtain utility model protection in Mexico.
The validity term of a utility model in Mexico is ten (10) years from the date of filing, which is non-renewable. It is also possible to transform a patent application into a utility model application. The request for transformation may be submitted within three (03) months after the filing date or within three (03) months after the Patent Office requires such transformation.
The Mexican Industrial Property Law 1991 (modified in 1994, 1997, and 2018) - regulates the mechanism of industrial design registration and protection in Mexico.
The Mexican Institute of Industrial Property (IMPI) is the government office in charge of evaluating and granting industrial design registrations.
Mexico is member of the Paris Convention for the Protection of Industrial Property and the Locarno Agreement that establishes an International Classification for Industrial Designs. On 6th September 2019, the Mexican Senate approved the accession of Mexico to the Geneva Act 1999 of the Hague Agreement Concerning the International Registration of Industrial Designs.
The types of industrial design applications that can be filed in Mexico include Non-Convention Application and Convention Application.
Multiple class design applications are possible in Mexico, provided that they belong to the same class of the international classification of industrial designs and there is a similarity between them.
In Mexico, the novelty grace period for industrial designs constitutes twelve (12) months before the Mexican filing date or before the priority date if the inventor or the successor to his rights has made the design known by any means of communication by putting the design into practice or by having displayed it at a national or international exhibition.
Once the substantive examination is over and favourable to the applicant, the Mexican Institute of Industrial Property will issue an allowance notice requesting the granting fee and maintenance fees for the first five (05) years. The term to make these payments is two (02) months, counted from the notification date of the allowance notice.
The design patent is valid for five (05) years from the date of filing. The registration is further renewable for consecutive periods of five (05) years each up to a total of twenty-five (25) years.
Renewal fees are due every five (05) years on the anniversary of the filing date until the validity of the industrial design is terminated.
The term for requesting renewal of the registration is six (06) months before the expiration date. There is a grace period of six (06) months for late renewal of a registered industrial design.
The Federal Copyright Law, which was enacted on 24th December 1996 and came into effect on 24th March 1997, is the main statutory law governing copyright and neighbouring rights in Mexico.
The Berne Convention for the Protection of Artistic and Literary Works is in force in the country, and the provisions of this international treaty are incorporated into Mexico’s national legislation. Therefore, artistic or literary works are protected from the time they are fixed into a material form.
The National Copyright Institute is the competent authority to enforce copyright for cases where the conduct by the offender is not intended to obtain a profit with the use of a work and where infringement relates more to omissions in observing certain obligations as foreseen in the Federal Copyright Law.
The Federal Copyright Law does not require the deposit of works as a condition to achieve or maintain copyright protection, or to avoid the imposition of a fine for not performing this action. It is possible though to register a literary or an artistic work before the National Copyright Institute, and for this, it is necessary to file copies of the work. Although registration is not mandatory, it is highly recommended.
Moral copyright belongs to the author perpetually and economic copyright is in force, as a general rule, for the life of the author plus hundred (100) years. When a copyright work belongs to two or more co-authors, the hundred (100) years are counted as from the death of the last co-author.
The term of neighboring rights differs from the term mentioned above; for example, for book publishers, the term of protection is fifty (50) years from the first addition of the book.