Mexico jurisdiction report: New provisions for trademarks

Among others, the list of non-registrable marks includes:

1. The technical names or commonly used of goods or services intended to be distinguished by the trademark, as well as those words, denominations, phrases, or figurative elements that, in ordinary language or commercial practices, have become usual or generic elements thereof, in addition to those that lack distinctiveness.
2. Three-dimensional forms or industrial designs that are available for the public domain or that have become of common use or those that lack distinctiveness, as well as the usual and ordinary form of the products, or that imposed by their nature or functionality.

III.  Holograms that are in the public domain and those that lack distinctiveness.

1. Signs which, taking into account all their characteristics, are descriptive of the products or services which they intend to distinguish. In the above case, descriptive or indicative signs used in trade to designate the species, quality, quantity, composition, destination, value, place of origin or time of production of the goods or services are included.
2. Letters, digits or their name, as well as isolated colours, unless they are combined or accompanied by other signs that give them a distinctive character.
3. The translation, transliteration, capricious spelling, variation or artificial construction of unrecorded words.

The new amendments include a specific paragraph stating that provision of sections I to VI of the referred article shall not apply, where arising from the use made in trade on the goods or services for which the mark is sought, where the mark has acquired a distinctive character in the national territory, pursuant of the regulations of this law.

“This amendment improves the protection spectrum for those trademarks that were limited for registration in the past.”

On the other side, article 231 states as granting requisite to indicate within the certificate of registration the circumstance by which the trademark was granted for acquired distinctiveness.

This amendment improves the protection spectrum for those trademarks that were limited for registration in the past. Besides, it is an opportunity to adopt precedents of countries such as the US or Argentina in which the history of secondary meaning has been regularly updated in case law.

Proving acquired distinctiveness

It is mandatory to be aware of the partial protection in Mexico since, although the new provisions allow registration for new trademarks based on acquired distinctiveness, it does not contemplate the specific elements to prove that requisite.

For that reason, taking into consideration foreign precedents, we strongly recommend considering at least the following elements to prove the acquired distinctiveness: