Rights holders succeed in changing Mexican legislation on certification marks

Consumer behaviour has changed significantly in recent decades. Today, shoppers take into account personal values, and look for brands that, for example, use organic farming methods and avoid child labour or the use of animal testing. To verify the claims that companies make about their products, several jurisdictions have started to recognise certification marks, which show that product claims have been verified by a third-party organisation.

In Mexico, certification marks were incorporated into the legal framework in August 2018 and were defined as "signs distinguishing goods and services whose qualities or other characteristics such as components, quality, processes, manufacturing conditions, and geographical origin have been certified by its title holder" (Article 184 of the Federal Law of Protection of Industrial Property; originally incorporated into Article 98 of the IP Law, which was repealed on 5 November 2020). Additionally, legislators established that entities which provide goods or services of the same nature as those certified with the mark cannot be title holders of the certification mark (Article 185 of the Federal Law of Protection of Industrial Property; originally incorporated into Article 98bis, I of the IP Law). Title holders are required to file a set of rules and standards with which the product or service they are certifying must comply, alongside their application. In this regard, it is important to note that in Mexico, it is the title holder´s responsibility to verify the compliance of its own standards. Failure to do so may result in the loss of the certifying body's rights to the mark. The rationale behind these provisions is to guarantee unbiased performance from certification entities in the market.

The introduction of certification marks was well received in Mexico; in less than 18 months, from August 2018 to December 2019, 19 certification mark applications were filed by national and international entities. However, it was not long before the Mexican Intellectual Property Office (IMPI) started provisionally refusing all the applications that were not filed in Class 42, under the alleged grounds that certification marks can only be registered in connection with certification services, as set out in Nice International Class 42. This criterion was clearly wrong, as it went against the very nature of certification marks.

For instance, if all certification marks were to be classified in International Class 42, this would automatically imply that their title holders would be rendering services of the same nature as those certified with the mark, which, as mentioned before, is expressly prohibited by Article 185 of the Federal Law of Protection of Industrial Property. Consequently, certification marks registered in International Class 42 would be vulnerable to nullity actions, as Article 258(I) of the Federal Law of Protection of Industrial Property establishes that a trademark registration will be nullified if it is granted against the law’s own provisions.

By complying with the IMPI's criterion and classifying their certification marks in International Class 42, rights holders would have made themselves vulnerable to non-use cancellation actions. This is because, unlike traditional marks, certification marks are not used by their title holders, but rather by an authorised party, which renders a specific service or manufactures a product that is unconnected to certification services per se. Therefore, title holders would not have any evidence of actual use of their certification mark, which would make it impossible for them to comply with the compulsory third-year declaration of use, as well as to defend themselves against a non-use cancellation action.

From an enforcement perspective, if all certification marks were to be classified in International Class 42, it would be possible for unauthorised third parties to take advantage of the goodwill of a certification mark and use an identical or confusingly similar mark to cover goods or services related to those certified, as the certification services covered by the registration would not overlap with those used by the infringing party. This would lead consumers to believe that a given product or service was certified by an organisation when it is not.

Initially, the IMPI was reluctant to accept these arguments. However, thanks to the efforts of rights holders, their representatives, and local IP associations such as the Mexican Association for the Protection of Industrial Property, the IMPI has come to realise that its criterion was incorrect, and it was setting apart Mexican intellectual property practices on certification marls from those of other jurisdictions such as Australia, Canada, the European Union, the United States, Peru and the United Kingdom.

Two years since certification marks were introduced, the IMPI is now starting to allow registrations for certification marks in classes other than 42. The lesson to be drawn from this case is that while an incorrect position from local authorities can endanger the existence of a legal right, it is possible for interested parties to work together to bring about change.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

Unlock unlimited access to all WTR content