If you work with clients, suppliers or platforms outside Mexico, sooner or later an email arrives full of English terms: trademark, copyright, infringement, cease and desist. And even when the language is clear, the legal meaning does not always match the literal translation.
Here is the basic vocabulary, with the correct equivalent in the Mexican system.
Trademarks
- Trademark / Marca. The sign distinguishing your goods or services from others: name, logo, slogan, three-dimensional shape, even a sound or a combined colour. In Mexico it is registered with IMPI.
- Trade name / Nombre comercial. The name a business establishment operates under. It is not registered but published, and protects within the geographical area of its effective clientele.
- Class / Clase. Each of the 45 groups of the Nice Classification into which goods (1 to 34) and services (35 to 45) are divided. Registration is applied for and paid per class.
- Trademark search / Búsqueda de anterioridades. The prior review of whether the sign is available. It is not a guarantee of grant; it is a risk analysis.
- Office action / Oficio. The communication in which the authority raises an objection. It carries a statutory deadline for reply.
- Opposition / Oposición. The filing by which a third party opposes a published application. In Mexico, within one month of publication in the Gazette.
- Declaration of use / Declaración de uso. The filing evidencing that the mark is in use. In Mexico it is submitted within the three months following the third anniversary of grant, and failure to file causes the registration to lapse.
- Renewal / Renovación. Extension of the term for a further ten years. It requires declaring use of the mark.
Other figures
- Copyright / Derechos de autor. Protects creative works from the moment of creation. In Mexico it is registered with INDAUTOR, and registration is declaratory, not constitutive.
- Patent / Patente. The exclusive right over an invention that is new, inventive and industrially applicable.
- Utility model / Modelo de utilidad. Functional improvements not reaching the inventive level of a patent.
- Industrial design / Diseño industrial. The new, ornamental appearance of a product.
- Trade secret / Secreto industrial. Information with value because it is confidential, protected while measures are kept in place to preserve it.
Disputes
- Infringement / Infracción. Unauthorized use of someone else’s right.
- Cease and desist letter. The out-of-court demand that someone stop using your trademark. Not a lawsuit, but usually the first step.
- Licensing / Licencia. Authorization to use without transferring ownership.
- Assignment / Cesión. Transfer of ownership. It is worth recording with IMPI so it takes effect against third parties.
Two false friends that cost money
- Copyright is not the same as trademark. Your logo may be protected by copyright as a graphic work and still need trademark registration to stop someone else using it in your line of business. They are distinct, complementary protections.
- The ® symbol is not free to use. In Mexico it may only be used for the goods or services the mark is actually registered for.
If an email has arrived with one of these terms and you are not sure how urgent it is, write to us: we will review it at no cost.