Trademark searches in Mexico

August 24, 2008 at 9:52 AM Leave a comment

In a first-to-file country, such as Mexico, one way of foreseeing if a trademark is available for use and registration is conducting a trademark search with the databases of the Mexican Patent and Trademark Office (MPTO).


There are two main databases that may be consulted in a trademark search: the Industrial Property Gazette that the MPTO issues on monthly basis (SIGA), and the online phonetic database of the MPTO (MARCANET).


Foreign entities that offer search services usually obtain the information from the Industrial Property Gazette, while local agents often use the online database. Unlike the trademarks database of the USPTO or the OHIM, there is no free access** to the trademarks database of the MPTO to conduct searches;  it is necessary to have a prepaid account. **( Update: Starting June 1, 2009, the online trademarks database of the Mexican Patent and Trademark Office MARCANET is available for free to any person with Internet access.).


A search conducted using the information stated in the Industrial Property Gazette (SIGA) will provide basic information about trademark registrations, such as the mark, the device (if applicable), registrant’s name, address and nationality, the filing date and application serial number, the registration number and the date of publication in the Industrial Property Gazette.


The phonetic search with MARCANET would provide all the above-information (although many agents fail to state the date of publication in the Gazette), plus the location of the applicant’s premises (as stated by the applicant), the next renewal due date, the date of commencement of use of the trademark in Mexico, if the applicant claimed it.


Further, given the lack of opposition procedure in Mexico (Update February 1, 2017. Mexico introduced oppositions against trademark applications) trademark applications are not published. The Industrial Property Gazette only states information about registered trademarks, while the on-line database of the MPTO also provides data about pending applications that may also obstacle a later trademark application.


Foreign searching companies would often state in the report that there is no deadline to file an opposition. Technically speaking, the statement is correct, since there is no opposition at all, but it also may be misleading. Mexican trademark registrations may be invalidated, but there are statutory deadlines to file the invalidation actions, and the deadline may vary depending on the cause of invalidation.


When conducting device searches, foreign searching companies may offer some advantages. The online database of the MPTO does not allow agents to search for devices (Update February 1, 2017; local trademark agents may now conduct device seraches online), and such searches must be requested by filing a written petition with the MPTO; the MPTO usually takes from three to six weeks to deliver a report; searching companies may produce results in a shorter term, although, depending on the database they use, there may be some important information missing.


The results of the trademark search conducted with the on-line database of the MPTO tend to be very accurate, but should not be regarded as 100% reliable. In some unusual occasions, the search fails to reveal the existence of trademarks very similar to the searched one. Further, the MPTO takes about ten days to update the database with the information concerning the new trademark applications.


On a related matter, although there are no common-law rights in Mexico and the first user of a trademark would not be acknowledged as proprietor, such user may cancel a Mexican registration for an identical or confusingly similar trademark, applied to the same or similar products or services, based only on the earlier use of the mark, either in Mexico or abroad. A typical trademark search would not show the existence of such potential adversaries or disputes.

Entry filed under: Trademark law. Tags: , , , , , , , , , , , .

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