Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

What does the new Industrial Property Law mean for trademarks?

Sponsored by

Stack of papers documents in archives files with clip papers on table at offices,  Busy offices and Pile of data unfinished folders on office desk indoor near window,  Business concept.

On July 1 2020, and as a result of the entry into force of the United States–Mexico–Canada Agreement (USMCA), the new Federal Law for the Protection of Industrial Property was published, abrogating the current Industrial Property Law. It will come into force on November 5 2020.

Some of the most relevant changes in the new Federal Law for the Protection of Industrial Property regarding trademarks are the following:

  • Use in Mexico of a trademark is not required in order to apply or achieve registration. Therefore, if there is no use, it is possible to file a trademark application on an intent to use basis. However, if a trademark is already in use in Mexico and a date of first use is declared, under the new Law, if the owner of the trademark registration does not prove the truthfulness of the date of first use declared, the registration may be declared null and void.

  • Trademark applications filed after November 5 2020 will be subject to a single examination, and not two exams as currently happens. Therefore, once Mexico's Trademark Office conducts the relevant examinations, it will issue an official communication on formal requirements (information and documents) and relative and absolute grounds for refusal (legal impediments or prior rights on record), as well as informing the applicant of eventual oppositions filed by third parties.

  • If an opposition is filed during the prosecution of a trademark application, the time period in which to respond to it will be four months after the applicant has been notified of the opposition, instead of the one month time period in the current IP Law.

  • Trademark registrations that are granted after November 5 2020 will be valid for 10 years from the granting date, and not from the filing date, as currently occurs.

  • Coexistence agreements are expressly allowed in order to achieve a registration to overcome refusals due to prior rights. Therefore if a coexistence agreement is submitted, this is enough to achieve a registration for a trademark application.

  • Partial non-use cancellation actions are not allowed by the Mexican Trademark law currently in force. However, under the new law, trademark registrations granted after November 5 2020 can be partially cancelled due to lack of use, only with respect to the protected goods and services that are not in use.


Mariana García

more from across site and ros bottom lb

More from across our site

Significant changes to the standard of law are unlikely, say sources, who note that some justices seemed sceptical that the parties disagreed on the legal standard
Sources say the High Court of Australia’s ruling that reputation is immaterial in trademark infringement cases could stop famous brands from muscling out smaller players
Members from both sides of the US House of Representatives wrote to USPTO director Kathi Vidal on Friday, March 24, expressing their concern about “patent thicketing.”
Charles Hoskin of Singaporean e-commerce platform Shopee, who made the jump from a luxury brand, says honest conversations and collaborations are key to combatting counterfeiting
Adam Williams speaks to Managing IP about the legacy of Brexit and why IP has sometimes got ‘lost in the noise’ at Westminster
Lawyers wish the latest manual had more details on Federal Circuit cases and that training materials for design patent examiners were online
Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP