Division 2 of the National Court of Appeals on Federal Civil and
Commercial Matters upheld the first instance court's decision
that declared that the trademarks "MS MANAGEMENT
SOLUTIONS" (& design) and "CMS" (& design)
are not confusingly similar.
Plaintiff, GMS Management Solutions SL, argued that its
trademark "MS MANAGEMENT SOLUTIONS" (& design),
identified below, was not confusingly similar with the trademark
"CMS & design", of Credit Management Solutions
Plaintiff's trademark consists of the letters "M"
and "S" together with a circle design which appears next
to the "MS" letter combination. The judge of first
instance understood that the circle design, as shown above, should
stand for the letter "O", and therefore, plaintiff's
trademark should be identified as "MSO MANAGEMENT
SOLUTIONS", for the purposes of analysis.
When filing the bill of complaint, plaintiff mistakenly referred to
its trademark as "MSO MANAGEMENT SOLUTIONS & design".
Although this was amended in later presentations, the judge of
first instance based his decision on this error and went on to hold
that the trademark in question was indeed different from the
trademark that the plaintiff was trying to register.
Although the judge of first instance considered that the marks in
conflict were not confusingly similar, he understood that GMS
Management Solutions was authorized to use the trademark "MSO
MANAGEMENT SOLUTIONS & design", and not as plaintiff had
initially filed the application, i.e., "MS MANAGEMENT
SOLUTIONS & Design.
The decision was rendered on February 14, 2012 in re "GMS
Management Solutions SL v. Credit Management Solutions
To avoid administrative or judicial authorities to interpret the
trademark in a different way from that originally determined by the
applicants, it is advisable to make the necessary clarifications
upon filing the trademark applications.
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.
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From the fourth quarter of 2012, the Intellectual Property environment in Mexico has been immersed in a great activity mainly characterized by two events, the incorporation of the country to the round of negotiations of the TPP and the removal of the General Director of the "Instituto Mexicano de la Propiedad Industrial".
Having spent years litigating IP matters, I have shared the frustration of clients who have been forced to intervene in administrative litigation because they are being frivolously accused of having committed an administrative infringement; their trademarks have been misappropriated; or their IP rights are being attacked in an ungrounded manner, through counterclaims that are filed in response to infringement actions previously filed by the owner of the IP right.
In a suit to dismiss a notice of opposition, the plaintiffs learned the hard way the need for consistency, when the court rejected their claim because it contradicted their own stance in the inverse situation.
Under the prior Law of Development and Protection of the
Industrial Property in force up to June 27, 1991, trademarks,
slogans, and commercial names had a 5 year lifeterm counted from
their Legal Date.
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