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19 September 2019TrademarksChristian Thomae

Non-traditional trademarks: Sights, sounds and smells

The Mexican Law of Industrial Property (LIP) underwent several and substantial amendments last year regarding trademarks and related topics, which came into force on August 10, 2018.

Within these are the introduction of a mandatory declaration of use system; changes in criteria and rules regarding classification of goods and services; the acceptance of letters of consent applicable to similar, yet not identical trademarks; the possibility of invoking acquired distinctiveness; and, what will be the highlight of this document, the recognition of non-traditional trademarks and trade dress.

Non-traditional trademarks have been recognised and accepted by other jurisdictions for some time, and Mexico has now joined the club. Led by the Mexican Institute of Industrial Property (IMPI), along with local chambers of commerce and industry and members of the IP community from various associations of lawyers, both national and international, this was an important effort to update our trademark system.

These efforts and discussions resulted in the definition of the term “trademark” as “any sign perceptible by the senses and capable of being represented in such a way that it allows to determine the clear and precise object to be protected”, giving way to the possibility of protection of non-traditional trademarks, namely: scent, sound, and holographic marks, as well as trade dress, but also certification marks, as those expressly mentioned in the text of the amended law.

Presenting new marks

Given the definition now contained in the law, there is some discussion as to whether this could include colour, taste, touch, and motion trademarks—and others—although these are not expressly mentioned in article 89 of the amended law nor as an option to tick on the application form published by the IMPI, nor were they specifically discussed during the preparation of the bill.

The definition, however, would seem to be broad enough to consider these in addition to those expressly mentioned in the application form. The means of describing or presenting them in applications has given way to attempts to protect motion and other non-traditional trademarks, that are yet to be decided upon by the IMPI.

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More on this story

Trademarks
10 August 2018   Amendments to Mexico’s IP law came into effect today, as the country looks to implement a more effective trademark system.
Trademarks
22 June 2018   The Mexican Institute of Industrial Property has updated its IP law to allow for the protection of some non-traditional marks.