For US owners and counsel
US vs Mexican trademark: what your USPTO registration does not cover
Four differences that decide real cases, and one that works in your favor.
For US owners and counsel
Four differences that decide real cases, and one that works in your favor.
A USPTO registration gives you rights in the United States. It gives you nothing in Mexico. Not a presumption, not a head start, not a defense if someone else registers your name there.
For most US owners this becomes concrete at one of three moments: selling into Mexico, manufacturing there, or discovering that a Mexican registration is being used to block them.
US practice is built around use. Mexico grants the registration to whoever files first, so prior use in the United States does not give you the Mexican registration.
What it does give you is a statutory nullity action. A Mexican registration can be declared null when it is identical or confusingly similar to a mark used in Mexico or abroad before its filing date, for the same or similar goods, if you prove uninterrupted use before that date — and the nullity can be partial, limited to the overlapping goods (article 258, fraction II, of the Mexican Industrial Property Law). The action must be brought within five years of the registration being published in the Gazette.
Two grounds have no time limit at all: a registration filed by an agent, representative, licensee, distributor or anyone with a direct or indirect relationship to the foreign owner, without express consent (fraction V), and a registration obtained in bad faith (fraction VI).
So the US owner who was squatted is not without remedy. They are simply in a slower, costlier and less certain position than the one who filed.
A Mexican registration lasts ten years counted from the date it was granted, renewable indefinitely (article 178). Owners who diary the filing date renew late. Renewal is requested within the six months before expiry and is still admitted during the six months after; once that passes the registration lapses by operation of law (articles 237 and 238).
The United States requires a declaration between the fifth and sixth year. Mexico requires one within the three months following the third anniversary of the grant, and protection continues only for the goods or services on which use was actually declared (article 233). Miss it and the registration lapses with no notice and no decision from IMPI.
In US practice, amending the identification of goods is routine. In Mexico, article 227 provides that if the applicant modifies the mark, increases the number of goods or services, or substitutes or changes them, the application becomes a new filing with a new fee, fresh publication and a new filing date. The priority is gone.
Read it carefully, because the corollary is the useful part: limiting the list is not on that list. Narrowing the specification to carve around a cited mark — the standard US response — does not restart the application. Broadening it or swapping it does.
Do not spend your best evidence on a weak opposition. A nullity action will not be admitted where it rests on the same arguments and the same evidence already raised in an opposition on which the Institute has ruled (article 259). If the real case is a nullity, think twice before previewing it in the one-month opposition window.
Everything filed with IMPI must be in writing and in Spanish, and documents in another language need a translation (article 13). And a notification takes legal effect on publication in the Industrial Property Gazette alone, whether or not a courtesy email arrives (article 20) — so the two months to respond to an office action, plus the two additional months available on payment of the fee (articles 225 and 226), run whether anyone is watching or not.
Mexico is a party to the Madrid Protocol, so a US applicant can designate Mexico from a US application or registration. It is cheaper to administer from one place. The trade-off is control: the designation is examined under Mexican law like any national application, and when IMPI raises an objection the response has to be filed locally, in Spanish, by a representative with a Mexican address for service.
If you filed in the United States within the last six months, a Paris Convention priority claim may let the Mexican filing carry that earlier date. That window does not reopen.
Around 30% of our trademark portfolio is filed for foreign owners, including companies based in the United States and Europe. Working from abroad is not an exception here; it is a large part of what we do.
No. A foreign individual or company can own a Mexican registration outright. You need a Mexican address for service, which we provide as your representatives, and a power of attorney.
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