Trademark StampSeveral factors must be considered prior to filing a trademark application in Mexico. These factors include: a) prior use of the trademark; b) prior trademark registrations or applications in other countries; c) searches of identical or similar trademark registrations or applications; and, the d) accurate determination of the goods and services to be protected by the registration; among others.

Some countries, such as the United States (US), require proof of prior use of the trademark in the country where registration is sought, but that is not the case in Mexico.

There is a misconception that, unlike in the US, in Mexico there are no “common law trademark rights” derived from prior usage of a trademark, but that is not entirely accurate. Mexican law (Ley de la Propiedad Industrial), provides that the usage of a trademark in Mexico or abroad is sufficient to create certain rights to the user that may enable her to prevail over another trademark application or even to void an existing trademark registration. In fact, in 2013, a Mexican Federal Court (Cuarto Tribunal Colegiado en Materia Administrativa del Primer Circuito) reaffirmed the intention of the Mexican lawmakers to grant rights derived from the use of a trademark abroad. Specifically, the Court held that “the intention of the lawmakers (…) is to protect such intellectual property rights derived from the prior use of a trademark in Mexico or abroad”.[1]

Moreover, Mexico is a contracting party to the Paris Convention, which provides priority rights for trademark applications filed in other countries (such as the US and Canada, which are also contracting parties). Both the date of first use of the trademark and any priority rights claimed per the Paris Convention must be accurately established in the trademark application. Not doing so can be disastrous. Therefore, it is extremely important to conduct a thorough legal analysis that comprises all the relevant factors to the specific case before filing a trademark application in Mexico.

[1] Amparo Directo 689/2012. Ex Hacienda Los Camichines, Cuarto Tribunal Colegiado en Materia Administrativa del Primer Circuito.