The repealed Industrial Property Law, was complex, difficult and most importantly, outdated, therefore its update was imperative and could not be postponed more, due to the pressure imposed to Mexico by the international community towards a transformation to a better and broader protection of IP rights.
As a consequence, 2020 has been an important year for the Industrial Property branch in Mexico; finally after almost 30 years from the issuance of the Mexican Industrial Property Law published on 1991, Mexico has enacted the Federal Law for the Protection of Industrial Property published on the Federal Gazette on July 1, 2020, which incorporates innovative mechanisms for the defense of industrial property rights in the light of International Treaties.
One of the most expected amendments was the introduction of partial cancellation actions and partial non-use cancellation actions, which will enable the Mexican Institute of Industrial Property (MIIP) to declare the cancellation of a registration in connection with specific products or services.
This figure will bring as a main advantage the avoidance of the filing of trademark applications that cover the "heading" of a class, or cover more goods or services that the ones really intended to be used, situation that has caused for years a great amount of useless registrations that constitute an obstacle to trademarks applications that cover products and services that will be effectively used.
Therefore, this will encourage the applicants to request trademarks for specific goods or services, which would entail that certain trademarks that could be similar can coexist because they protect different and specific products or services despite they are in the same class.
However, the disadvantage would be the increase of coexisting trademarks, in that sense, the MIIP will need to be very thoughtful while analyzing partial cancellations actions in order to guarantee that the coexistence of trademarks in the same class will not cause any type of confusion among consumers.
It is important to stand out, that despite that the New Federal Law for the Protection of Industrial Property will come into force on November 5, 2020, its Regulations are still pending.
In that sense, regarding partial cancellation actions, the Regulations would need to establish the specifications related to how the MIIP would record and establish the corresponding annotation on the certificate of registration regarding the cancelled products or services.
Another amendment that is worth highlighting is the possibility of excluding some of the products and services covered by a trademark also after the obtaining the registration.
The latter, sounds like an advantage for the applicants that may avoid long litigation proceedings, and would solve the conflict trough a simple exclusion, which is a more easy and quick strategy, also for the MIIP exclusions can be a more effective way to end a conflict rather than studying and solving a litigation action.
For example, if a cancellation action is filed against a trademark, the owner of the attacked trademark instead of filing a response and wait for a resolution that can take approximately one year, will only exclude the products or services that affect the plaintiff and the conflict would be solved in a easily.
However, not in every case exclusions can end a conflict, therefore, and as stated before it is important that the MIIP studies thoughtfully each exclusion, in order to avoid that the coexisting trademarks can create any type of confusion among consumers, because despite the products or services are different they could still share the same commercialization channels.
Also it is important that attorneys study each case profoundly, in order to make the right suggestion to their clients according to each situation.
Regarding the above, it is important to recognize the big step Mexico has given towards a broader of Industrial Property rights, however it is imminent the big challenge the Mexican Institute of Industrial Property and IP attorneys will face, since the implementation of the New Federal Law for the Protection of Industrial Property need to be cautious and precise in order for it to be effective and beneficial for the IP right holders.
Originally published by Becerril Coca & Becerril, September 2020
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