On March 27, 2020, the Mexican Ministry of Health published, in the Federal Official Gazette, the approved modification to the Mexican Official Standard-051 (NOM-051), which is the regulation that states the general labeling specifications for pre-packaged food and non-alcoholic beverages.
This modification seeks that the pre-packaged food and non-alcoholic beverages have a new frontal-labeling warning system that could be better on informing the consumers when a product is high on calories, sugars, sweeteners, sodium and/or saturated fats.
Additionally, this new frontal-labeling warning system aims, among other purposes, to protect children by warning them, through the use of a series of large octagonal stamps placed in the packages of all these products, when these have an excess of the above-mentioned critical ingredients and also prohibiting the use of children's characters, animations, animated drawings, pets, etc., in the label or packages of products, or in the promotion/marketing, to avoid that children could be incited or encouraged to purchase or choose one of these products, because of the use of these kinds of elements.
Even though the regulations seem to be beneficial for consumers, and mainly for children, the obligation to exclude certain elements as can be children's characters, animations, cartoons, etc., from the label or packages of the products or from their promotion/marketing, clearly affects the IP rights of brand owners, as those elements could be protected by a trademark or by a copyright.
"4.1.5 Pre-packaged products bearing one or more warning stamps, or the sweetener legend, must not:
- include on the label children's characters, animations, cartoons, celebrities, athletes or pets, interactive elements, such as: visual-spatial games or digital downloads, which, being directed to children, incite, promote or encourage the consumption, purchase or choice of products with excess critical nutrients or sweeteners, and
- make reference on the label to elements other than the product itself, which pursue the same purposes of the previous paragraph."
The obligation established in the above-mentioned article will come into force on April 1, 2021, whereas the obligation to use the octagonal stamp or stamps in the packages of products will come into force on October 1, 2020.
Therefore, it is obvious that the products marketed to children that bear one or more warning stamps will be impeded, from April 1, 2021, to use children's characters, animations, cartoons, etc., in the labels, packages of the products, as well as in promotional purposes, despite that those elements could be protected by an IP right.
While the purpose of the mentioned regulation is to protect children, the measures established in it, in the author's consideration, are completely excessive and unnecessary as the owners of trademark registrations and copyrights that manufacture and commercialize pre-packaged food and non-alcoholic beverages could be affected.
The above regulation, as in the author's criterion, restricts the use of trademarks and copyrights, as well as any kind of marketing or promotional strategies that use the prohibited elements of the products, which, marketed to children, could bear one or more warning stamps. Consequently, it inhibits the free competition between the individuals or companies that elaborate, promote and/or commercialize pre-packaged food and non-alcoholic beverages.
Moreover, it is highly probable that this new regulation will seriously affect the link between the consumers and the products per se, causing a direct damage to rights' holders. It will affect them in their IP rights as well as in their economic rights, since the regulation will oblige them, as from April 1, 2021, to modify the products' labels/packages, that fall in the mentioned prohibition, and that have been distinguished for several years by the consumers with an element that will be prohibited by this date: a children's character, animation or a cartoon. Therefore, this disposition will force them to create a new label/package for their products and to spend more money in trying to create a link between the consumers and the product which label/package was modified. This is completely excessive.
In this sense, in the author's point of view, the owners of trademark registrations and copyrights that manufacture and commercialize pre-packaged food and non-alcoholic beverages who want to continue using the elements prohibited by the modification of the new regulation, will require to appeal it, mainly its article 4.1.5, before the Federal Courts, and by filing this appeal, the Courts will study the possible negative effects of the regulation, and if it is the case, will declare it as illegal so the IP right owners can continue using said elements without being sanctioned by the Mexican Authorities.
Under such circumstances, in the author's criterion, the NOM 051 regulation is totally illegal and affects the rights of the IP rights holders. In the end, the Federal Courts will have to determine whether the regulation is illegal or not, and if its application has negative effects to the IP rights.
Originally published 30 April, 2020
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.