Inconsistencies and uncertainties

22-05-2018

Begoña Cancino

Inconsistencies and uncertainties

Joel Carillet / iStockphoto.com

The Mexican Industrial Property Law now includes specific articles to define, protect and enforce geographical indications, but it also contains discrepancies that may cause procedural conflicts during the trademark registration process, says Begoña Cancino of Creel, García-Cuéllar, Aiza y Enriquez.

On March 13, 2018, the Mexican Industrial Property Law (MIPL) was officially amended to include new provisions on various aspects of IP rights.

The analysis of such amendments from the material standpoint has been subject to many articles written by Mexican specialists already, so we take this opportunity to analyse the effects of one particular modification. Although it does not refer to any material changes—only procedural ones—it will affect the Mexican IP landscape.

As has been already explored, most of the amendments relate to the inclusion of geographical indications (GIs) as one of the IP rights that should be protected and enforced under the MIPL as of March 2018, even though before the amendments, the MIPL already provided as a cause for trademark refusal the attempt to register a GI, even though such a legal right was not even defined within the applicable law at the time.

After the adoption of the TRIPS Agreement, which contains a section on GIs, Mexico has not adopted specific provisions on this form of IP until this recent amendment, which not only includes a particular chapter defining GIs and explaining the process to achieve legal protection, but also, a particular cause of infringement and even a crime involving the unauthorised use of such specific rights. 

Now that the MIPL officially includes specific articles to define, protect and enforce GIs, and it makes total sense to have a specific cause for trademark refusal when the applicant attempts to obtain exclusive protection over a term including a GI or a similar reference, this seems to be aligned with the whole chapter amended to that end.

However, it is not. When we analyse the specific articles defining GIs compared to those that constitute grounds for trademark refusal, we find inconsistencies that may raise procedural conflicts, at least during the trademark registration process.

Inconsistencies

To have a better sense of those inconsistencies, we should look at the following articles recently approved where the lawmakers established:

l Article 157: by GIs, it shall be understood the name of a geographical area used to identify the origin of a product when a determined quality, reputation or other characteristic is attributable to such product due to its geographical origin.

l Article 158: by geographical area, it shall be understood to mean consisting of the whole territory, region or locality inside a country.

l Article 159: the protection granted by this law to the appellations of origin and GIs will initiate with the declaration issued by the Mexican Institute of Industrial Property (IMPI) for those purposes. 

In light of the foregoing, it is clear that in order to deserve protection as a GI under the MIPL, (i) the specific sign must identify a product as originating in a given place; (ii) the qualities or reputation of such product should be essentially due to the place of origin (there must be a link between the product and its original place of production), and (iii) the protection will be subject to the official declaration ruled by the IMPI. 

Based on the above, it is clear for us that the official declaration is necessary to trigger the benefits afforded by the MIPL to GIs, one of them being the possibility to prevent the registration of such GI as a trademark, especially considering that GIs and trademarks are both distinctive signs used to distinguish products in the marketplace, and also that both allow consumers to associate a particular quality or reputation with a specific good.

"When we analyse the specific articles defining GIs compared to those that constitute grounds for trademark refusal, we find inconsistencies that may raise procedural conflicts."

Having said that, it will be reasonable to assume that in order for the IMPI to consider a GI as a cause for trademark refusal within the relevant registration process, it must consider only those GIs already certified by the same authority, to be consistent with section 159 above. However, section X of article 90 is silent about the need for having certified a GI in order to be considered an obstacle during the trademark registration process.

Article 90

According to article 90, the following may not be registered as marks: geographical areas; maps; and names of populations; and names used to designate communities, when such signs indicate the origin of products or services and can lead to confusion or mistake about their provenance.

Also included are expressions such as “gender”, “type”, “style”, “imitation”, “produced in”, “manufactured in” or other similar expressions that can lead to confusion among consumers or imply unfair competition.

Upon this basis, we have some questions. Why did the lawmakers miss this inconsistency? How will the IMPI consider GIs within the trademark process? How can the applicant of a trademark be enabled to use the regular references linked to its products without violating a GI?

To what extent will the official actions ruled by the IMPI within the trademark registration proceeding be used as constructive evidence of infringement and even of a crime, even though the GI referred in those official actions has not been certified by the IMPI?

That will be something to consider in the implementation of the recent amendments discussed.

 

Begoña Cancino is a partner at Creel, García-Cuéllar, Aiza y Enríquez. Her practice focuses on IP, data privacy, regulatory and administrative litigation. She is a member of the International Trademark Association and the Mexican Association for the Protection of Intellectual Property. She can be contacted at: begona.cancino@creel.mx

WIPR