Mexico: Trademark Enforcement In Mexico

Last Updated: 15 October 2010
Article by Armando Arenas

In Mexico trademark rights are enforced mainly through the Trademark Office. The enforcement of famous and notorious marks is governed by specific rules

On June 16 2005 the Mexican Law of Industrial Property (LIP) was amended to improve the protection afforded to notorious and famous trademarks. The reform introduced a distinction between 'famous marks' and 'notorious marks' to reflect the fact that the public has a greater knowledge of some well-known marks than others. Under the LIP, trademarks that are well known throughout Mexico are considered 'famous marks' and enjoy a greater degree of protection than 'notorious marks', which are well known to a limited group of people.

Notorious marks

One of the most important aspects of the reform was the inclusion of the following concepts:

  • dilution of a notorious trademark (Article 90(XV) of the LIP);
  • tarnishment of a notorious trademark; and
  • protection against taking unauthorized advantage of the notoriety of a trademark.

The current text of Article 90(XV) sets out the grounds for the Trademark Office (TO) to refuse to register a denomination, design or three-dimensional form with regard to any product or service, when the sign is identical or similar to a trademark that the TO estimates to be, or has declared, a notorious trademark in Mexico.

Registration of the junior sign will be rejected if there is a risk that it may:

  • create confusion or a risk of association with the owner of a notorious mark;
  • constitute an attempt to profit, without authorization, from the notoriety of a trademark (by free-riding on its reputation);
  • tarnish a notorious trademark; or
  • dilute the distinctive character of a notorious trademark.

Specifically with regard to notorious trademarks, Article 213(VII) provides hat an administrative infringement exists when a third party uses without authorization a trademark that is regarded as notorious under the terms of Article 90(XV) of the LIP. Consequently, for the owner of a notorious mark in Mexico to enforce its rights against a third party that uses, without authorization, a mark that is identical or confusingly similar to the earlier sign, the TO must find that at least one of the above four mentioned situations exists (ie, confusion/association, unauthorized use, tarnishment or dilution).

Evidence

When filing a claim for infringement of a notorious trademark, the plaintiff should submit suitable evidence that at least one of the above four situations exists. This is particularly important where a junior mark that is identical or similar to the notorious trademark is being used by an unauthorized third party with regard to products or services different from those on which the notorious trademark is used. The most suitable evidence is a survey which should be conducted by a specialized agency.

Risk of association

The Mexican courts have developed two approaches regarding the risk of association. The first states that the risk of association is broader in application than that relating to the risk of confusion; the second approach suggests that the risk of association is contained within the risk of confusion.

Effectively, there is a risk of association when the public could think that some type of relationship exists between the holder of the notorious trademark and the alleged infringer, such as a licence, franchise or sponsorship. This includes a risk that when looking at the similarity between the signs, the public could establish a connection or association based on the fact that the perception of the applied-for sign evokes a memory of the notorious mark in the mind of the consumer.

Unauthorized profit

With regard to the 'unauthorized profit' criterion, protection is afforded against free riding on the reputation of a mark. This is understood as the unlawful practice of obtaining an unauthorized benefit from using a mark similar to a notorious trademark.

Tarnishment

'Tarnishment' is considered to have occurred when the use of a junior trademark discredits the good reputation of a notorious trademark.

Dilution

Dilution is a concept borrowed from common law systems. It allows the owner of a famous mark to prohibit the use of that mark by a third party in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use on products that do not compete and have little or no connection with those of the trademark owner. For example, a notorious trademark used by one company on beauty products may be diluted if another company starts using a similar mark for alcoholic beverages.

Famous trademarks

The 2005 reform provides very broad protection to famous marks. Such marks are protected against use of a similar or identical mark in relation to any goods or services, without the need for the TO to find that there exists:

  • confusion or a risk of association;
  • unauthorized profit;
  • tarnishment; or
  • dilution.

However, to submit a strong case of infringement of a famous trademark, suitable evidence proving that the mark is known by the majority of the public is necessary.

Even though famous trademarks theoretically enjoy a broader scope of protection than any other types of mark, Article 90(XV)bis of the LIP, which governs famous marks, was not included in the scope of Article 213(VII) of the LIP on administrative infringements. Accordingly, an amendment of this latter provision is necessary to provide legal certainty to owners of famous marks when enforcing rights in Mexico.

Infringement proceedings

Trademark enforcement in Mexico is a peculiar beast. It is not the courts but rather the TO that is in charge of enforcing trademark rights and deciding trademark disputes (except in case of criminal offences, see below).

The plaintiff must file a formal written claim together with evidence which, for a case involving a notorious or famous trademark, must enable the TO to assess whether the allegedly infringed mark has obtained such status. The plaintiff can request an inspection of the infringer's premises and the seizure of the infringing goods.

The TO accepts the claim and sets a date for the inspection and seizure. At the time of the inspection the TO serves the defendant notice of the claim, giving it 10 working days to answer.

The TO normally requires the plaintiff to post a bond in case the latter applies for preliminary injunctions or if the TO considers that the outcome of the seizure warrants such bond.

Before initiating an infringement action, the plaintiff may move for preliminary injunction to request either:

  • the seizure of products which it considers infringe its notorious or famous trademark; or
  • most importantly, a temporary injunction issued by the TO, under which the defendant is barred from manufacturing and selling any allegedly infringing product while the decision on the merits is pending.

The defendant has 10 working days to file its defence against the preliminary measures. The plaintiff then has 20 business days to file its formal infringement complaint from the date of notification of the injunction. The bond in such cases should cover the value not only of the seized products, but also of the cost of suspending operations.

The defendant can post a counter-bond to release the seized goods. Both the plaintiff and the defendant must produce evidence at the time of filing the claim or answering it. After the defendant has answered the claim and the TO has assessed the evidence and conducted the confusion test, the latter shall issue a resolution on the merits of the case.

The TO's ruling can be appealed to the Federal Court for Tax and Administrative Affairs (FCTA) or before a district court. An FCTA decision can be appealed to the Federal Circuit Court, the decision of which is final.

The punishment for trademark infringement, considered a violation of the law, ranges from fines of up to around $70,000 to the temporary or definitive closure of the infringing business, and even an administrative arrest of 36 hours.

The TO usually imposes fines only. However, if the defendant continues committing the infringement after a decision on the merits has been issued, the fines will be doubled. Penal action will be taken against the defendant if its illicit conduct continues after the decision on the merits has become final.

First published in the World Trademark Review, Country correspondent: Mexico, June/July 2009

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions