MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
instance is final and not subject to further appeal. Correction As stated in the regulations of the FCL, the interested parties may request the correction of transcription or other errors directly attributable to INDAUTOR, within a period of no more than three months after the issuance of the certificate. 3.10 Related Rights Please refer to 2.6 Related Rights . 4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration The Mexican trade mark system is based upon the registration of a distinctive sign to grant title holders an exclusive right to its use. While the FLPIP acknowledges usage of a distinctive sign as a way of having a better right to apply for registration, it does this only in cases where the user has bona fide intentions. The FLPIP states that a third party who in good faith uses the same trade mark or another confusingly similar, in Mexico, for the same or similar products or services, provided that the third party had begun to use the trade mark, uninterruptedly, before the filing date of the application for registration or the first use declared therein, shall have the right to request registration of the trade mark, within five years following the day on which the registration was published, in which case this user must first file and obtain the invalidation of the prior trade mark. Doing so will confer the following legal benefits: • exclusive rights to the use of a certain trade mark for its title holder in Mexico;
• it will constitute an intangible asset; • it will ensure the granting of licences on behalf of its titleholder; and • it will give the right to prohibit third parties from using identical or confusingly similar marks in commerce if such use could mislead consumers or dilute the mark’s distinctive - ness and to file legal actions against infringe - ment, dilution, or counterfeiting, including through administrative, civil, and criminal actions. The guidelines and information to be included in the corresponding application for registration changes will depend on the type of trade mark to be registered. For regular trade marks – such as wordmarks, designs, 3-D devices and mixed marks – it would be mandatory to include speci - mens of the same or their full visual represen - tation. For non-traditional trade marks, and or, secondary meaning/trade dress, it will be man - datory to attach visual evidence on the configu - ration of the trade marks and a detailed descrip - tion of the distinctive elements to register. 4.2 Trade Mark Register The national authority in charge of the registra - tion of industrial property in Mexico in IMPI. No other authority has faculties for the administra - tion and granting of IP rights in Mexico. IMPI maintains a publicly available website of the Trade Mark Register: ACERVO DE MARCAS. While trade mark searches are not mandatory to initiate a trade mark registration procedure, it is of upmost importance to conduct them to determine the chances of success in registration of certain trade mark. 4.3 Term of Registration Trade mark rights have a validity of ten years following the date of the granting of their regis - tration and are renewable indefinitely, as long as
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