Country chapters

Trademark procedures and strategies: Mexico

By Eryck Armando Castillo and Jimena Chi Barrales, Uhthoff, Gomez Vega & Uhthoff SC

Legal framework

National

Article 28 of the Constitution provides the basis for the main IP laws.

The Industrial Property Law is the statute governing trademarks and other industrial property rights. The law comprises seven sections, the fourth of which is titled “Trademarks, Commercial Slogans and Trade Names”.

The Industrial Property Law Implementing Rules also form part of the Mexican IP legal framework. In addition, the Industrial Property Law Regulations set out the general rules for the prosecution of trademark applications, along with other IP rights.

International

Mexico is a party or signatory to the following relevant international treaties and conventions, among others:

  • the Paris Convention for the Protection of Industrial Property;
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks; and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

A number of other international agreements affecting the protection of industrial property rights and enforcement issues also apply (see www.diputados.gob.mx/LeyesBibl...)

Unregistered marks

Protection

Under the Industrial Property Law, the exclusive right to use a trademark is achieved through a trademark registration granted by the Mexican Institute of Industrial Property (IMPI). However, the Industrial Property Law also provides an exception to the registration system, recognising that the user of an unregistered mark may enjoy certain rights against a third party that has a similar or identical trademark registration. However, such rights are limited to very specific circumstances, provided by Articles 92(1) and 151(2).

Use requirements

Under Article 92, a trademark registration cannot be enforced against a third party if the latter’s use of the same or a similar trademark in the national territory is done in good faith and does not cause confusion, as long as such use is uninterrupted and started before the filing date of the application or the date of first use of the registered mark. The third party has the right to apply for the trademark within three years of the date on which the registration is published, in which case such third party must first request and obtain a declaration of nullity of the earlier registration.

Article 151 provides that a trademark registration shall be deemed null when:

  • it is identical to, or so similar as to cause confusion with, another mark that has been used in the country or abroad before the filing date of the trademark registration; and
  • it applies to the same or similar goods or services.

In this case, it will be necessary to provide evidence of uninterrupted and prior use of the trademark in the country or abroad, before either the filing date or – as the case may be – the date of first use declared by the registrant.

Any cancellation action based on prior and uninterrupted use of a mark must be initiated within three years of publication of that trademark’s registration in the Trademark Gazette.

Registered marks

Ownership

Under Article 87 of the Industrial Property Law, any “industrialists, merchants, or service providers” may use trademarks “in industry, in commerce or in the services they render”, while the right to their exclusive use is obtained through a trademark registration. Consequently, any person or entity is entitled to apply for a trademark registration before IMPI.

Representation

Under the current legislation, it is no longer compulsory to submit a power of attorney along with a trademark application, since IMPI will recognise the competence of the representative signing such application through a declaration under oath contained in the application form. However, a valid power of attorney must exist and be granted before the date on which the application is filed; otherwise, the declaration under oath may be deemed invalid.

Nevertheless, for most other actions – including any contentious proceedings during the examination of the trademark application – a certified and apostilled or legalised power of attorney must be granted.

Scope of protection

Under Article 89 of the Industrial Property Law, all visible signs can be protected, provided that they are:

  • sufficiently distinctive; and
  • capable of distinguishing the goods or services to which they apply or are intended to apply from other signs registered in the same class.

Conversely, Article 90 provides a list of non-registrable signs due to absolute grounds for refusal. They include:

  • descriptive marks or indicative words used in trade to designate the quality, quantity, composition, end use, value or place of origin of the goods or time of production;
  • isolated letters, digits or colours, unless combined with or accompanied by other elements (eg, symbols, designs or denominations) which provide them with sufficient distinctive character; and
  • geographic denominations and proper or common nouns and adjectives, where they may lead to confusion as to the origin of goods or services.

Procedures

Previous searches

Before filing any trademark application, an availability search is highly recommended. Searches are carried out per trademark and per class. Searches concerning word marks can be carried out online, whereas searches for device marks are performed online directly by the applicant or its representative or performed by IMPI on a written or online request, with the results available within two to three weeks.

Examination

The examination procedure begins with the filing of a trademark application form with IMPI. In general terms, a trademark application must comprise:

  • the name, domicile and nationality of the applicant;
  • the domicile of the commercial or industrial establishment;
  • the exact goods or services to be protected, taking into account that multi-class applications are not allowed and that broad or indefinite specifications are no longer acceptable;
  • intent to use (when the mark has not been used in Mexico before filing) or actual use (when the mark has been used in Mexico before filing, such date is declared under oath and has the nature of a iuris tantum (rebuttable) presumption); and
  • the priority number and filing date, if applicable. The priority document need no longer be filed.

Once the application has been filed, IMPI allocates an application number along with the corresponding filing date and the examination process begins. The process comprises three phases:

  • review of the application and publication for opposition purposes in the Official Gazette;
  • formal examination, during which the examiner determines whether the application fulfils formal requirements, such as the name of the applicant, nationality, address and correct goods or services classification. Most official actions issued during the formal examination relate to the classification of goods or services; and
  • substantive examination, during which the examiner determines whether the mark applied for has already been registered by another party and whether the mark complies with absolute and relative grounds.

The formal and substantive examinations together take four to six months. Any objection raised during formal or substantive examination will be notified to the applicant through an office action, granting a two-month term to provide legal arguments against the objections. This term can be automatically extended by a further two months. An application with no objections may be granted within six months of filing. Otherwise, the examination procedure may take between 12 and 18 months.

Opposition

Congress recently approved amendments to the Industrial Property Law which establish an opposition system in Mexico. The relevant decree was published in the Official Gazette on June 1 2016 and entered into force on August 30 2016.

Pursuant to the new opposition system, on receipt of the trademark application, IMPI must:

  • publish the application in the Industrial Property Gazette within 10 business days; and
  • examine the application to verify compliance with the legal and regulatory requirements.

The opposition procedure is set out in the new Article 120 of the Industrial Property Law, which establishes the following general rules:

  • The action can be filed by any individual or entity.
  • The action can be filed against any trademark application on any of the grounds set out in Articles 4 (contrary to the public or moral order or good conduct, or in violation of the law) and 90 (grounds for denial of registration).
  • The non-extendable period for disputing a registration is one month following the application’s publication date.
  • The opposition must be filed in writing and accompanied by suitable documentation and a receipt verifying payment of the corresponding fees. The evidence to be submitted depends on the grounds of opposition.
  • The filing of an opposition action does not:
    • suspend the application process;
    • grant the opposing party any status as an interested third party; or
    • automatically determine the outcome of the in-depth examination carried out by the IMPI.
  • IMPI will publish a list of applications that are subject to third-party opposition in the Industrial Property Gazette and the trademark applicant will have one month (as of the publication date) to file a response to the grounds of opposition. By way of such response, the applicant may modify the application (eg, limit the relevant products); alternatively, the applicant may decide not to respond. Failure to respond is not deemed to constitute tacit acceptance of the opposition or formal denial of the application.
  • The examiner may review the written opposition and the applicant statements during the substantive examination (since the substantive examination will not be replaced by the opposition system). In this sense, the new opposition system is not treated as a procedure within the registration process and IMPI will not issue a decision over the opposition, but will instead issue either a registration certificate or a formal denial; in both cases, both the applicant and the opponent will be notified.
  • The applicant for a denied trademark application has the same means of appeal as before the new opposition system was implemented (ie, recourse to review before IMPI, appeal before the Federal Court of Tax and Administrative Affairs (FCTAA) or amparo action (ie, on constitutional grounds) before the FCTAA). The opponent (when having appropriate legal grounds) may seek cancellation of the granted registration through a cancellation action based on Article 151 of the Industrial Property law.
Registration

The registration certificate grants the owner the exclusive right to use such mark for a 10-year period, beginning from the filing date; registration can be renewed for subsequent 10-year periods. To maintain its rights, the registrant must use the mark in Mexico within three years of the date of grant and for a further three years; otherwise, the registration will become vulnerable to cancellation based on non-use. Although no proof of use is required, the renewal application includes a declaration under oath that the mark has been used according to the Industrial Property Law.

Changes

Change of address, as well as licences, must be recorded with IMPI, which confirms the recordal in writing. Only recorded changes can be enforced against third parties.

Removal

Removing a trademark registration is possible using any of the following mechanisms:

  • Voluntary cancellation – if the rights holder no longer wants to maintain its right, it is possible to request cancellation before IMPI.
  • Lapse – if the registration is not renewed at the end of any 10-year period or within the six-month grace period post-registration, the registration will automatically lapse.
  • Cancellation due to non-use – under Articles 130 and 152(1) of the Industrial Property Law, if a trademark is not used for three consecutive years in relation to the products or services for which it was registered, registration will be subject to cancellation for non-use. Therefore, any third party with legal standing may file a cancellation action, requiring the defendant to prove the use of the challenged trademark for at least some time during the three years preceding the date on which the cancellation action was filed.
  • Cancellation action due to loss of distinctiveness – when the owner of a trademark registration has caused its distinctive sign to become a generic name for one or more of the products or services for which it is registered, or has taken no action against its distinctive sign becoming generic, the trademark will lose its distinctive character and be subject to cancellation.
  • Invalidation action – Article 151 of the Industrial Property Law sets out the grounds under which a mark registration may be declared invalid, including when a registration was granted on the basis of incorrect information in the application. Any third party with legal standing may file an invalidation action within five years of the date of publication of the challenged trademark in the Trademark Gazette.

Enforcement

When the infringer is using an identical or confusingly similar trademark for identical or similar goods or services to those covered by the registration, an infringement action may be filed before IMPI.

Due to the administrative nature of IMPI, these infringement actions follow a common procedure, which begins when the plaintiff files the formal claim. Once IMPI has admitted the claim, it will serve notice to the defendant, which must then file its reply. IMPI will then issue a decision on the merits of the case.

As IMPI is not a court of law, it can order infringers only to stop the infringement and pay a fine. Once IMPI’s declaration of infringement has become final, it is possible to file an action before a civil court to claim damages of at least 40% of the commercial value of the infringing products.

Lastly, the Industrial Property Law provides the possibility to request temporary injunctions before filing or during the prosecution of infringement claims against infringers.

When the infringer uses a mark that is identical to a mark that has been registered for the same goods or services, the rights holder may file a criminal action with the Attorney General’s Office, which will start an investigation to ascertain the existence of counterfeiting. If counterfeiting is confirmed, the Attorney General’s Office will defer the matter to a federal district judge. Criminal penalties vary from between two and 10 years’ imprisonment and fines of up to $100,000.

Ownership changes and rights transfers

Ownership changes

The recordal of ownership changes and rights transfers is necessary for enforcement against third parties, as well as to ensure that use made of the mark will benefit the actual owner.

In the case of ownership changes, such as purchases or assignment of rights, trademarks can be transferred without restriction, including goodwill, and with or without any part of the business assets. As to the necessary documents, IMPI will accept the original assignment or document, or a signed copy that has been notarised, legalised or apostilled.

If the change of ownership is due to a corporate act, such as a merger or a change of legal regime, it will be necessary to file the corresponding document in which the act is executed. Such document should be filed in original form or as a certified copy, duly legalised or apostilled.

Licences

Licences should also be recorded so that the licensee’s use of the mark benefits the licensor. However, on previous occasions IMPI has found that unregistered licences still had legal effect and could be used to prove use of a mark in order to maintain its registration. This was based on Article 19(2) of TRIPs, as well as Article 1708(9) of the North American Free Trade Agreement, which states that in order to maintain a registered trademark, it is possible to recognise use made by a party other than the registrant, provided that the rights holder has controlled such use. However, this interpretation does not constitute jurisprudence in Mexico; consequently, it is highly recommended to record any licence agreement with IMPI, even where the licensee is an entity controlled by the licensor.

Related rights

Cumulative rights are not prohibited. A design that meets the novelty and originality standards may be protected under industrial design or copyright law. Further, if such design is distinctive, it can also be protected through a trademark registration.

A quintessential example would be a three-dimensional (3D) design, since product shapes that incorporate artworks or industrial designs can simultaneously meet the standards of novelty or originality to be the subject of industrial design rights and copyright, and qualify as 3D trademarks too. Lastly, trademark rights may be complemented by reservation of rights under the Copyright Law. This statute grants the owner the exclusive right to use the titles or names of periodical publications, artistic names, fictitious characters and advertising promotions.

Online issues

In Mexico, no government agency regulates the registration of domain names. Instead, a private organisation named Akky, authorised by the Internet Corporation for Assigned Names and Numbers, maintains the ‘.mx’ domain name register.

When applying for a ‘.mx’ domain name, the applicant agrees to follow Akky’s Dispute Resolution Policy, which is in line with the policy established by the World Intellectual Property Organisation. Consequently, any party which considers its trademark rights infringed by a ‘.mx’ domain name and wishes to seek the cancellation or transfer of that domain name must submit such request to Akky, which will grant such request if the following criteria are met:

  • The domain name is identical or confusingly similar to a registered trademark, a registered commercial slogan, an appellation of origin or reservation of rights in which the petitioner has rights and the domain name registrant has developed a pattern of such conduct; or
  • The registrant has no rights or legitimate interests in the domain name; and
  • The domain name has been registered or used in bad faith.

Uhthoff, Gomez Vega & Uhthoff SC

Hamburgo 260

Colonia Juárez, Delegación Cuauhtémoc

CP 06600

Mexico City

Mexico

Tel +52 55 5533 5060

Fax +52 55 5208 8387

Web www.uhthoff.com.mx

Eryck Armando Castillo

Senior partner

ecastillo@uhthoff.com.mx

Eryck Armando Castillo is a senior partner of Uhthoff, Gomez Vega & Uhthoff SC and has over 25 years’ experience in managing the trademark and domain name portfolios of Mexican and international companies, both domestically and internationally. His practice includes both prosecution and enforcement matters. Mr Castillo was educated in Mexico and holds a degree from the Franklin Pierce Law Centre; he continues his education by attending seminars throughout the world.

Jimena Chi Barrales

Attorney

jchi@uhthoff.com.mx

Jimena Chi Barrales is an attorney in the trademark department of Uhthoff, Gómez Vega & Uhthoff SC. She holds an LLM in international trade law, contracts and dispute resolution from the University of Turin (2012) and an LLB from the Panamericana University (2010). Her IP practice began in 2007, focusing on national and international IP rights prosecution, international trade, technology transfer and IP policies. Ms Barrales received a fellowship from the Japanese government to join the Osaka Institute of Technology Faculty of Intellectual Property as an IP researcher (2014).

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Issue 67