Trademark registration with the IMPI: what to decide before filing the application

Anyone may use a mark without registering it, provided it does not infringe someone else's registered mark, but the right to its exclusive use is obtained through registration with the Instituto Mexicano de la Propiedad Industrial (Mexican Institute of Industrial Property, IMPI), under Article 170 of the Ley Federal de Protección a la Propiedad Industrial (Federal Law for the Protection of Industrial Property, LFPPI). Without registration, protection against third parties is limited to exceptional situations, such as prior use in good faith (Articles 175 and 258).

Marks are registered for specific goods or services under the Nice Classification (Article 176 of the Law), which can be consulted on the website of the World Intellectual Property Organization (WIPO) and in the IMPI's CLASNIZA tool. Each national application covers a single class (Article 108 of the LFPPI Regulations) and, once registration is granted, new goods or services cannot be added, not even within the same class (Article 177). It is advisable to cover what you reasonably expect to sell, bearing in mind that in year three only the goods or services whose use is declared remain protected (Article 233).

It is advisable to search beforehand for identical or confusingly similar marks, registered or pending, for the same or similar goods or services, because they bar registration (Article 173, Section XVIII); the IMPI allows them to be searched online with its MARCia search tool. The same article also excludes, among others, generic signs, descriptive signs, isolated letters, digits, or colors, and signs applied for in bad faith.

By way of exception, generic or descriptive signs, or isolated letters, digits, or colors, may be registered if they have acquired distinctiveness through use in Mexico, which must be claimed and proven in the application (Article 173 and Articles 86, 87, and 105 of the Regulations). A conflict with a similar earlier mark may also be overcome with the express written consent of its owner (Article 173, second-to-last paragraph, and Articles 88 and 89 of the Regulations). Neither route cures bad faith.

The application must state the date of first use, which cannot be changed, or that the mark has not been used; if nothing is stated, the latter is presumed (Article 214, Section III). Declaring prior use requires identifying the establishment (Section VII), or a website if the applicant declares, under penalty of perjury (bajo protesta de decir verdad), that there is no physical establishment (Article 107 of the Regulations). A date that is not proven is grounds for invalidation (Article 258, Section III).

1. Define the sign and its type

   Word, design, or a combination. Identify any descriptive elements that cannot be claimed as exclusive (Article 216).

2. Choose the class and search for prior marks

   One application per class, using the terms of the Nice Alphabetical List; also search related classes.

3. Set the date of first use

   Declare it only if you can prove it; it cannot be changed. If there has been no use, say so expressly.

   Deadline: Before filing

4. File and calendar the deadlines

   The filing date determines priority among conflicting applications (prelación, Article 220). Calendar the declaration of use for year three and the renewal for year ten.

Since 2020, applications have been published in the IMPI Gazette (Gaceta) within ten days of receipt, which opens a non-extendable one-month opposition period (Article 221). Formal and substantive examination follow; the 2026 reform separated the two (Article 225). If the IMPI issues requirements or raises grounds for refusal, or an opposition is filed, the applicant has two months to respond, plus two additional months for a fee; without a response, the application is deemed abandoned (Articles 225 and 226). Absent requirements or oppositions, the IMPI must decide within five months from filing (Article 229 Bis). Modifying the mark or adding goods or services requires a new application, with a new filing date (Article 227).

Registration lasts ten years from grant and is renewable (Article 178). Within the three months following the third anniversary of the grant, the owner must declare actual and effective use. Protection continues only for the goods or services declared; without a declaration, the registration lapses by operation of law, with no ruling from the IMPI (Articles 233 and 260, Section III). In addition, three consecutive years of non-use allow a total or partial lapse to be declared (Article 235), and renewal requires a declaration of use (Article 237).

An advertising slogan is usually protected as an aviso comercial, the Mexican registration for commercial slogans (Articles 200 and 201). A trade name is protected without registration in the area of its actual clientele, and throughout Mexico if it is disseminated widely and consistently at the national level (Article 206).