How to register a trademark in Mexico

Opening a company is not an easy task. No matter how small it is, there are always a thousand and one questions about the costs, the official documentation, among other things. One of the most frequently asked questions is how to register a trademark.

If it’s a question you’ve asked yourself before, but haven’t found a reliable and complete answer, look no further! Throughout this article, I am going to help you clarify all those doubts that haunt your head, from what is a brand and that Brand type would be yours, until how to register a trademark in the IMPI and how much you will have to pay for this procedure.

All ready? Let’s start.

What is a brand?

Brand is defined as the commercial identifier that distinguishes the goods or services of a company from others of the same kind or class.

For the , a brand can refer to a name, a term, a sign, a symbol, a design or a combination of some of them. A clear example is the sporting goods brand Nike, since both the iconic popcorn and the word “Nike” are elements that differentiate it in a sea of sports brands.

What is trademark registration?

Registering a trademark means carrying out a procedure to request its exclusive use Throughout the national territory.

In Mexico, the process of online trademark registration must be done before the IMPI, the Mexican Institute of Industrial Property. Later I will tell you how to do this procedure step by step.

In case you are interested in extending the registration of the trademark in other countries, then you must resort to the “Madrid Protocol” system, a treaty administered by the World Intellectual Property Organization (WIPO) that offers trademark owners the option to protect them in several countries.

Benefits of registering a trademark

If you have and have been using your brand for a while without any problem, I suspect you are wondering: And what is the use of registering my trademark? Well, being the owner and master of a brand has one or another benefit that you do not want to miss, here are some of them:

You will be able to use the symbols ® (Registered) and MR (Registered Trademark).
You will have the freedom to grant licenses to use the brand. For example, to open franchises.
You can collect royalties for the use of your brand. 🤑
The brand will be yours, which means that there will be no “clever” who can steal it.
You will have every right to take criminal action for malicious use or counterfeiting.
Last but not least, it will increase the value of your company, since brands are subject to appraisal.

Now that you know some of the Advantages of registering your business brandwe are going to review the types of trademarks that you can register.

Types of marks

In Mexico there are four main types of brands:

nominative. It is a name made up of one or more words and/or numbers. “BBVA” and “Google” are nominative trademarks.
Unnamed. It refers to a design or logo that does not have words. One example is the four intersecting rings that distinguish the Audi car brand.
mixed. It is a mixture of the two previous types, made up of a logo and a name. The Bimbo brand is a mixed brand, as it includes both the word and an image of its unmistakable bear.
three dimensional. It refers to a figure with three or more faces. For example, the happy meal at McDonald’s.

In addition to these, there are other types of less common brands such as: sound markssuch as iPhone ringtone; olfactory marks, like a perfume; holographic markings, such as the hologram on a credit card; commercial imageslike the design of a Starbucks branch; certification markslike the stamp of cruelty-free (animal cruelty free) from PETA and collective marksfor example the group of Brewers of Mexico.

What is needed to register a trademark?

Enough of theory! The time has come to get down to work with the registration of your brand! As in any procedure, I recommend you take some time before starting to fill out your application, to make sure you have all the documents.

Maybe it’s obvious to say but you will need a distinctive name for your brand, an unusual name and preferably one that does not contain common or generic terms. If you still don’t have a name that convinces you, try our free name generatorit will help you get hundreds of ideas in a matter of seconds!

Find your brand in MARCia

When you have chosen , the next step is of vital importance to move forward with the process: verify that there is no other trademark registered in Mexico with the same name. How? Go to , write the name of your brand and click on “Search”. You can also use advanced search filters to search for not only identical but similar texts, as well as type and class of mark, among others.

After a few seconds, if the trademark you are looking for already belongs to someone else —or is in the process of being registered—, you will see a panel with the information and the status of the process. The idea is to find a name that is not registered yetto increase the chances that your process will be successful.

As you can see, MARCia also makes it easy to search by logo, so if you already have a defined logo, I suggest you search for it as well to make sure it doesn’t look like another trademark.

What is MARCIA? (IMPI)

of the tools of IMPI, MARCIA It is one of the most complete. This application is actually a search engine with artificial intelligence that is used to find applications and registrations of trademarks made in Mexico, so that you can easily know if your logo is similar to that of someone else previously registered or in process. You need to visit before register trademark.

Meet Nice Class

The International Classification of Products and Services for the Registration of Trademarks or Nice Classification allows the filing of applications for trademark registration by referring to a single classification system. It is made up of 45 classes, of which 34 refer to products and 11 to services.

The IMPI has a technological tool called ClassNicewhich helps with search and classification of products and services of brands. Basically, it is a database that contains all the terms included in the Nice Classification.

To find out the class of your brand, go to , search for a word (or words) that define your product or service and use the filters to find out the class that best defines your brand.

💡 You have doubts? ClasNiza provides in which it explains in detail how to use the tool.

Do a phonetic search

The last step, before filling out the application, is to do a phonetic search in the IMPI.

The phonetic search consists of looking for the name of the brand that you intend to register, to find others that may sound or be spelled similar in the IMPI database.

To do a phonetic search you must have the name of your brand, know its class and access . There you will find two spaces to enter each of these data, then click on “Search” to obtain a list of registered trademarks, names and commercial notices that may have similarities with yours.

When you have advanced in the three previous points and you are sure of your brand is uniquethen it was time to start filling out the IMPI trademark registration application.

Learn more…

Article

As I told you before, the IMPI is the body that administers the industrial property system in Mexico. In a few words, it is who is going to give you the rights for the exclusive use of your brand. if you wonder how to register a trademark These are the steps you must follow:

Visit MARCIA (IMPI)
Fill out the trademark registration form.
Pay the rights of your brand.
Sign and send your documentation
Follow up on the process

Let’s talk a little more about each of the above points. To register you must fill out an application on the IMPI website: . Go to the “Actions and Programs” section in the top menu and click on “Process your trademark or patent here”.

To continue filling out the application, log in with your PASE account—if you don’t have one yet, with your CURP, an email, and your name. After logging in, click on “Mark Online” > “New Application”, read and accept the privacy notice and fill out the form, which is made up of six sections:

Step 1: fill out the form

1. What do you want to record?

Here you must specify what you want to register, the options are:

Brandwhich includes brand and logo.
collective markis used for association registration.
Comercial advisefor example a slogan.
Tradenamewhich is the sign that identifies a company and its activity.
commercial imageincludes non-traditional brands.

Since the purpose of this article is to teach you how to register trademark in the IMPI, we are going to choose “Brand”. Right away you will be able to select if you want to register only the brand name, the logo (which must be in .gif format) or both.

Below you will see a section in which you can indicate if there are elements on which protection is not requested. Here you can put the words that you do not want to protect, for example, suppose you want to register the trademark “Milagros Café”, it is in this space where you should indicate that you do not need to protect the word “Café”.

If the name of your brand (or any part of it) is in another language, you will find a space and you must indicate its meaning in Spanish. If it’s not necessary, skip it and move on.

2. Description of products or services

In this second part you will have to tell a little more about your products or services. The first thing you should do is write your brand class (which you should already have if you followed my previous recommendation to search for it in ClasNiza, if not, go back to the section “What is needed to register a trademark”). In some cases, you will see a warning message saying that there is other related classes the one you chose and it will ask you if you want to register them too.

Then comes one of the most important parts of the process of registering a trademark in the IMPI, the description of your products or services. It is important that you be as specific as possible.

3. Data of the owner of the brand

The next step is to register the name of the owner or owners of your brand. Yes! A trademark can have more than one holderin that case they would need to sign a co-ownership contract.

Select whether the registration will be in the name of a natural person or a company. Then write the personal data of the owner: full name, nationality, telephone, email and address; click on “Add owner” and, if necessary, press the button “Is there more than one owner of the brand? Enter your details here.” If there is only one owner, move on.

4. Have you used your brand?

We arrive at a part of the process that usually generates many doubts among entrepreneurs and businessmen. And it is not very clear what the IMPI refers to by “brand use”. In general, having business cards…