What is the importance of registering a trademark?
For the consumer, the brand is what distinguishes one product from another, regardless if it is closely related or even if the products offered are of the same type. This creates brand loyalty which is a valuable asset reflected in the financial statements of a business under the category “goodwill” or “intangibles”.
That brand is what will ultimately generate in the public that awareness of quality of the product or service that is being offered. It will make a different impression from the rest of the products of the competition.
Therefore, the registration of the trademark and its corresponding logo is an important and necessary process, when introducing a new product or service in the market or entering a new market with an existing brand. The object is to obtain exclusivity by its use, and thus prevent others from exploiting it.
Otherwise, anyone could present to the public similar products or with characteristics so identical that they could generate confusion with consumers and weaken the effort that was invested in the brand. This will correspond in a financial loss for the business.
In Mexico, the regulatory body called the Mexican Institute of Industrial Property (IMPI), has the legal authority to administer the country’s intellectual property system. This means that it will be responsible for registering the trademarks filed and having a global registration that prevents two trademarks with similarities that could lead to confusion.
Trademarks are registered with IMPI by filing the appropriate documents with samples of the trademark and logo and by providing as much detail as possible as to color and letter font or size. An element that is equally important is a comprehensive description of the product or services that is associated with that trademark. Vague or ambiguous terms will lead to unnecessary contestation or, worse, impossibility to defend the trademark in the event of a contestation. For example, a client recently registered (on their own) a trademark in Mexico associated with “swimming pool cleaning and maintenance”. Within days they received multiple notices of contestation from numerous competitors attempting to defend their trademarks as the service was so vague that it may infringe on their trademark. MexLaw intervened, settled all the claims by withdrawing the vague trademark application and filing a new one with a more precise specification of the product. This represented unnecessary delays and expenses to the business.
Another particularity of filing a trademark application with IMPI is the speed with which they are considered and approved. This indicates that it does not necessarily do a thorough examination and review of its registers to identify potential conflicting names. Therefore, it is up to the trademark owner to monitor applications and quickly file oppositions in the event of possible conflicts. IMPI will respond with an initial reply (whether confirming or reject the complaint) and then the trademark owner must enforce that decision by taking legal action to have counterfeited products destroyed or removed from the market.
Finally, another difference with Mexican trade names (name of the corporation) and those in other jurisdictions is that the corporation’s business name does not benefit from exclusive protection as is the case elsewhere in North America. For example, a client recently incorporated a Mexican subsidiary of its American counterpart with the same name. Several months later it became aware that a Mexican Company registered a trademark like its Corporate name. All attempts to have this trademark cancelled or modified failed as Corporate names in Mexico are not trademarks and therefore do not benefit from any protection. Therefore, it is strongly recommended to register a trademark although the name of the corporation is similar to the trademark being registered. Especially if the product or service provided is associated with that name.
It is therefore recommended that if you intend to establish a business in Mexico, and start making use of a trademark, consult an expert lawyer on the subject. They can advise and support you in the registration process, which will provide legal certainty in its use, and avoid the possibility that your trademark may violate the rights previously obtained by another person. Once the registration has been validly obtained with IMPI, it will entitle you to the exclusive use of the trademark, which will generate protection that can be exercised through civil and criminal actions when any third party infringes that right.