Crossed wires: protecting medicines in Mexico
Trademark registration system
Trademarks in Mexico are regulated under the Industrial Property Law (IPL) and its regulations. In general, businesses, merchants, or service providers can use trademarks in industry, commerce or in the services they render (Article 87, IPL). The right to their exclusive use is obtained through their registration with the Mexican Institute of Industrial Property (IMPI). Any person or entity is entitled to apply for a trademark registration before the IMPI, and actual use is not required by the IPL.
All visible signs can be protected provided that they are sufficiently distinctive, and are able to identify the products or services to which they are applied, or are intended to be applied, from those in the same class (Article 89, IPL). Under this definition, olfactory and auditory trademarks cannot be protected.
However, three-dimensional signs can be protected as trademarks since these are visible signs. What cannot be protected as a trademark is set out in a rather long article (Article 90, IPL), which contains a list of general prohibitions and the only legal grounds for rejecting a trademark application.
In addition to the general, absolute and relative prohibitions provided in the IPL, in the case of brands related to medicinal products, Mexican trademark examiners have a special rule regarding registrability based on the Mexican Health Law (MHL): if a junior trademark application does not have at least a three-letter difference from a senior trademark registration, and is confusingly similar, the junior one will not be registered.
Even though the MHL is not binding for trademark matters as it is not included in the IPL, Mexican examiners use their discretion to apply it.
As well as this special criterion, when applying for a trademark registration, applicants must bear in mind that medicinal products fall into class 5, which includes many other types of goods that are unrelated, such as baby foods, disinfectants, fungicides and herbicides.
This should not be a problem as long as a junior trademark application is refused only if it is confusingly similar to a senior trademark registration and the goods sought to be protected are the same as, or related to, ones covered by the older trademark registration.
“HAVING A TRADEMARK REGISTRATION FOR THE DISTINCTIVE NAME WILL NOT MAKE ANY DIFFERENCE FOR THE PURPOSES OF GETTING A MARKETING AUTHORISATION WITH THAT TRADEMARK.”
However, as mentioned above, actual use of a trademark in the Mexican market is not a requirement to apply for, or get, trademark protection, so in domestic practice any applicant may request the broadest protection possible— that is, all the products that are covered in a single class.
Therefore, when choosing a trademark in Mexico for a medicinal product, the applicant needs to make a careful and deep search, bearing in mind all the peculiarities of the Mexican system, to evaluate the possibilities of achieving trademark rights.
Obtaining a trademark registration does not, however, automatically mean that trademark owner is able actually to use the trademark on medicinal products. There is yet another process that involves a different authority, and has its own characteristics.
Health authorisation process
According to our legal system, the process to obtain marketing authorisation from the Federal Commission for Protection against Sanitary Risks (COFEPRIS) of the Mexican Health Authority for a medicinal product includes a review and approval for the pharmaceutical or drug name, referred to by our regulatory bodies as a ‘distinctive name’. Failure to propose an acceptable name will result in a bar to obtaining marketing authorisation.
The specific requirements and rules regarding distinctive names are provided under the MHL and its regulations. The basic set of rules regarding the pharmaceutical or drug names is as follows:
