Mexico: Do I have to register my Trademark?

published on 2 February 2023 | reading time approx. 2 minutes

A characteristic of Industrial Property is territoriality; therefore, its protection is only valid in the country where it is registered. How are foreign trademarks protected in Mexico?

In Mexico, trademarks are protected by the Mexican Institute of Industrial Property (IMPI) and the applicable legal framework is the Federal Law for the Protection of Industrial Property and its regulations. If a company, or individual, has its trademark registered abroad, and subsequently makes use and exploitation of its Trademark within the Mexican territory, it must make the corresponding registration before the IMPI.

Likewise, it is possible to request the protection of an international trademark through the Madrid Protocol, by means of which, through an application, the trademark is protected in the countries indicated in such application, as long as they are member countries of such Protocol.

Although the Madrid Protocol is a tool that uses a unified method to process the registration of a trademark internationally, and that the countries that are part of such treaty can enjoy this benefit, this does not mean that the trademark is automatically protected internationally, since it must comply with the guidelines of each country.

The international registration of a trademark by means of said Protocol can be done by means of the following options:

make the trademark registration application in the "office of the country of origin" that corresponds to send such application to the WIPO (World Intellectual Property Organization) and only give the notice of use in Mexico, or;
Make the individual registration in, in this case, Mexico by filing the application for protection.

The importance of protecting the trademark lies in avoiding the counterfeiting of the same by third parties outside its ownership; as well as, that other manufacturers or suppliers obtain economic benefits by offering products or services similar to their own.

Without protecting the trademark, the company or individual owner does not obtain legal certainty, does not reinforce its status as owner, does not acquire market positioning, cannot grant licenses to third parties for the use of its trademark and cannot acquire the power to grant a franchise; thus avoiding future excessive expenses in litigation and fees. Therefore, the company runs the risk that its trademark may be used by other companies or persons not related to it; for this reason, it is important to obtain the proper guidance and advice to maintain the exclusivity of its products or services by duly registering its trademark in Mexico, avoiding any problem that may affect its correct use.