Mexico jurisdiction report: The new-look IP system

03-08-2018

Carlos Gonzalez

Mexico jurisdiction report: The new-look IP system

tumsasedgars / iStockphoto.com

On March 18, 2018, important amendments to the Mexican Industrial Property Law were published in the Federal Official Gazette; they will enter into force from August 10, 2018. These changes confirm the implementation of a more effective trademark system in Mexico, adapted to international treaties.

The most relevant amendments to the IP Law are:

a) Inclusion of non-traditional trademarks
Sound, smell and holographic trademarks now form part of the catalogue of trademarks that can be registered in Mexico.

b) Inclusion of secondary meaning
Secondary meaning refers to trademarks that consumers have come to recognise as a source indicator, meaning those that having acquired distinctiveness derived from their use within the Mexican territory can be registered.

c) Inclusion of trade dress as a form of IP
This change relates to the possibility of registering the elements that generally refer to characteristics of the visual appearance of a product or its packaging (even the design of a building) that signify the source of the product to consumers.

d) Declaration of use
According to the reform, filing a declaration of use will be compulsory in the Mexican system. This declaration needs to be filed within three months after the three years of registration. This is a declaration rather than the need to prove use. If the declaration is not filed at the appropriate time, the registration will lapse.

As for renewals, this requirement still applies and the renewal application papers should include a declaration that the owner or its representative states under oath that the mark is in use within the Mexican territory.

e) Bad faith
The amendment introduces a more extensive nullity claim based on bad faith, targeted to any kind of direct or indirect relationship between the bad faith registrant and the owner of the prior rights. Bad faith is now defined as a request for a trademark registration made against good practices, uses or customs of the IP system, commerce and industry; or a request that seeks an improper benefit or advantage. This nullity action can be exercised at any time.

f) Opposition system
The examiner will now be compelled to take into account an opposition. This stipulation states a clear difference from the initial provision in this aspect, as the examiner was not obliged to do it before the recent amendments to the law.

There will be a period of closing arguments during the opposition proceeding where substantial evidence may be submitted and arguments may be filed subsequently within a period of two working days.

f) Letters of consent/coexistence agreements
This is a very important change because the previous IP Law did not allow for letters of consent and/or coexistence agreements. The amended law introduces the possibility of submitting coexistence agreements or letters of consent in order to support the registration of a trademark or in reply to an objection.

"The amended law introduces the possibility of submitting coexistence agreements or letters of consent in order to support the registration of a trademark or in reply to an objection."

h) Certification trademarks
Certification trademarks are incorporated to distinguish products and services whose qualities or special characteristics, such as components, processing conditions, quality, processes, or geographical origin, have been certified by their owner according to Mexican official norms.

Under this new concept, it will be possible to register a trademark that is used to show consumers that particular goods or services have met certain standards.

i) Well-known and famous trademarks
This is an important change. Now, the declaration of the well-known nature or fame of a trademark can be requested even if the trademark is not registered.

j) Nullity of a trademark based on prior use
The previous IP Law included a three-year term for filing a trademark nullity action based on prior use. With the reform, the term has been extended to five years.

k) Amendment to article 183
The amendments establish that the only way to formally serve notifications to the applicants and owners of trademarks shall be the Federal Mexican Intellectual Property Gazette.

It is important to mention that trademark proceedings initiated before the entry into force of the new amendments shall be treated under the scope of the IP Law in force at the time of submission.

Conclusion

At the time of writing, the regulations of such amendments have not been published yet, but the Mexican authorities are due to publish them shortly. It is very important to wait for the publication of such regulations in order to clarify the appropriate interpretation of some dispositions contained in the amended IP Law.

Carlos Gonzalez is an attorney at law at Becerril, Coca & Becerril. He can be contacted at: cgonzalezc@bcb.com.mx

Jurisdiction report, Mexico, trademark amendments, Mexican Industrial Property Law, IMPI, international treaties, trade dress, trademark opposition, use

WIPR