Mexico jurisdiction report: The new-look IP system
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.
