Mexico: Big Changes In Mexican Trademark Law

Last Updated: 2 July 2018
Article by Antonio Belaunzarán and Alonso Camargo
Most Popular Article in Mexico, July 2018

As a result of the Mexican Government's renegotiations on free trade agreements, and combined with demands from the national business community, important amendments to the Mexican Industrial Property Law (IPL) have been launched. One package of amendments related to Appellations of Origin (AO's), Geographical Indications (GI's) have been enacted, and the other has been approved by Congress and is yet to be enacted.

AOs and GIs

The amendments were published on March 13, 2018, becoming effective as from April 27, 2018.

The amendments include very important changes with respect to AOs and, for the first time in Mexico, specific protection for GIs is included.

For many years, Mexico has granted protection to AOs as Mexico is a contracting party of the Lisbon Agreement since February 1964. Up to date,Mexico has 15 Appellations of Origin, being the most known and relevant "TEQUILA" and MEZCAL".

In turn, GIs were not recognized as such by any Mexican legal body. Mexico is rich in designations which protection was not provided by the AOs framework and thus, legal protection for GIs was a long-time demand in Mexico.

Essentially, the AOs and GIs are defined in the IPL following the WIPO's Lisbon Agreement definitions, as in both cases, the rationale is to protect signs identifying the geographical origin of goods whose characteristic and/or reputation are essentially attributable to such origin. The main difference between GIs and AOs is that for AOs the quality and reputation factors must derive exclusively or essentially from the geographical environment, including natural and human factors.

The highlights of the amendments are the following:

  • Protection for either AOs or GIs starts as soon as the Mexican Institute of Industrial Property (IMPI) issues a so-called "Declaratory of Protection".
  • A Declaratory of Protection of AOs or GIs is t
  • be issued ex officio, or by petition of individuals or legal entities directly involved in the production or manufacturing of the designated product. In addition, the industrial chambers or associations, and the local government authorities at the geographical zones involved, shall qualify for requesting the Declaratory of Protection.
  • Various grounds of refusal for a Declaratory of Protection are provided, these examples being the most relevant:

    1. technical, generic or common use names;
    2. descriptiveness;
    3. names either identical or confusingly similar to those already protected or pending;
    4. prior rights as derived from a trademark application or registration covering identical or similar products or services. Thus, very relevant is that prior trademark rights shall be respected. However, an important omission is that nothing is mentioned with regard to prior rights as derived from trademark notoriety or fame.
  • All applications for protection must be published in the Mexican Official Diary for any party proving legal interest files an opposition.
  • As the Mexican Government owns the Declaratory of Protection, a DO or a GI can be used only by the corresponding authorization issued by IMPI.
  • Who will be entitled to apply for the use of AOs or GIs? Only those directly involved in the extraction, production, or manufacturing of the protected product(s) and that such activity is performed at the protected territory or geographical zone. The applicant shall comply with the applicable official standards, if any.
  • There is no term established for IMPI to issue the authorization of use, but once granted the authorization it will expire in 10 years, renewable for identical terms.
  • The authorization of use can be assigned only to a third party who meets the corresponding legal requirements to qualify as a user, producing its legal effects. Sublicense is allowed only to those distributing or selling the products of their trademarks.
  • The authorization of use is subject to invalidation when granted in violation of the IPL or when false data or false documents were submitted. Cancellation of the authorization of use will proceed because of the lack of use for three full years, or when used in a different manner than that set up in the Declaratory of Protection, or when the D.O.P or I.G.P legends are omitted.
  • Administrative offenses: (1) The use of AOs or GIs without the corresponding authorization from IMPI. (2) The use of names identical or confusingly similar to a protected national or international AO or GI in connection with equal or similar products. (3) Produce, storage, transport, distribute or sell product equal or similar to those protected under a AO or GI national Declaratory or those foreign AOs or GIs recognized by IMPI, using any type of indication or element misleading consumers as to the quality or origin of the products, including those as "kind", "type", "manner", "imitation" or the like.
  • Criminal offense: Produce, storage, transport, distribute or sell products of Mexican origin not having the corresponding certification applicable to the AO or GI and the corresponding official standard, with the purpose of obtaining a direct or indirect economic benefit.
  • Recognition of AOs and GIs protected in a foreign country. IMPI will recognize those protected in a foreign country upon the terms of the International Treaties. The owner of an AO or GI protected in a foreign country will be entitled to apply for its recognition by filing an application before IMPI and enclosing the document showing the protection under the laws of the corresponding country or according to the international treaties. The grounds of refusal, opposition rules and invalidation are set identically as those for national applications. Cancellation, however, will proceed when the document showing foreign protection is not valid any longer in such country.

The second package of amendments:

On March 22, 2018, the Mexican Senate approved a Decree whereby some articles of the Mexican Industrial Property Law (IPL) were amended and new provisions dealing with trademarks were introduced.

The Decree is yet to be published in the Mexican Official Diary so that it becomes in full force. We expect the publication to be affected soon.

Long awaited changes will be at last a reality in Mexico, such as the following:

  • Protection through registration as a trademark for "Trade-Dress" is incorporated for the very first time in Mexico.
  • For the first time, trademark protection through registration is provided for non-visible signs, such as smell marks and sound marks, as well as for certain animated marks such as holograms.
  • Acquired distinctiveness (secondarymeaning) will be recognized as an exception to the absolute grounds for refusal.
  • Consent and coexistence agreements will be allowed to overcome senior rights, except when dealing with identical trademarks for identical goods or services.
  • Bad faith, in a broad sense, is incorporated as a ground for opposition, and also as a ground for invalidation.
  • Protection for Certification marks is recognized.
  • Class headings will no longer be possible. It will be necessary to be specific in products and services descriptions according to the Nice Classification.
  • Oppositions will become binding for the Trademark Office, which therefore will have to issue decisions duly grounded and justified based on the merits of each opposition filed.
  • In order to clear-up the Mexican Register from non-used marks, it has been established a use declaration under oath, which must be filed within the next three months after the third anniversary of the date of grant of the trademark registration. If no use is declared by such date, the registrations will automatically lapse.
  • No more defensive trademarks. Indeed, it will no longer be possible to renew a trademark registration in certain classes based on the use of the same registered trademark in other class.

No doubt that once the above amendments become effective, Mexico will be making a big step for achieving a more competitive trademark protection system, most of all because of two important changes, first because of the recognition of co-existence agreements; and second because finally the opposition will be binding so that the Trademark Office issues a reasoned decision on the merits of the opposition.

Nevertheless, there are certain important issues which were not included in the amendments, and which are still demanded by the business community for launching Mexico to the highest level of competiveness. We refer to partial non-use cancellation actions and to awards for damages; the latter being necessary to provide trademark owners with the ability to file a claim for damages simultaneously at the time trademark infringement would be filed, and not as currently provided where a claim for damages can be filed only until after a decision finding infringement becomes final.

In any event, there is no doubt that the above amendments represent the greatest achievement for trademark protection in Mexico in several decades.

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
 
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