Uhthoff, Gómez Vega & Uhthoff SC
Mexico recently introduced a number of legal amendments whereby the types of registration for distinctive signs were extended to include non-traditional marks. However, fluid mark protection remains a riddle.
As society developed and human interaction increased, all manner of communication was required to satisfy the needs of trade. Consequently, trading and commercial competition led to the necessity for product identification and, as a result, trademarks became the chosen means to identify goods and services in the market.
Traditionally, distinctive signs were constant, static, two-dimensional words or designs identifying goods and services and used as a signature or source identifier. Such traditional marks remained on the market for decades.
Today’s tendency towards brief, visual information, along with the development of new technologies and styles of social consumption, has resulted in a revolution in approaches to and strategies for identifying products. The results require more energised, less constant, more mobile trademarks, such as sounds, moving image sequences and fragrances (ie, non-traditional signs).
IP specialists must now adapt and innovate in order to help clients to find the best method for protecting and enforcing their rights. Fluid marks have emerged as an alternative marketing and commercial strategy increasingly used by clients. However, much national legislation fails to consider the protection of fluid marks, and it often remains up to the courts to determine applicable criteria for enforcement.
On 10 August 2018 Mexico introduced fresh legal amendments which extended the alternatives of registration for distinctive signs to include non-traditional marks. However, fluid mark protection remains a riddle and requires adequate legal assessment to determine the best course of action for clients.
The first consideration in determining a protection strategy is to analyse what the client intends to register and any effective use that will be made.
According to applicable law, Mexico remains a first-to-file country, thus only registration grants exclusive rights over a sign. There are some rights that are recognised through use, but they are extremely limited. Effective use of a mark must be made by its owner or an authorised third party using the sign in the form in which it was registered or with only minor modifications that do not alter its distinctiveness. However, determining whether a modification marginally or significantly alters a sign is highly subjective.
Mexico’s system is strict and can be unfriendly to marketing teams; however, good options are available to obtain IP protection which still allows for creativity.
A fluid mark must have a consistent base for it to be susceptible to recognition and serve as a source identifier, otherwise general consumers frequently seeing a random or different sign cannot generate loyalty, acknowledgement or emotional attachment to the product or its producer or provider. Consequently, a client may consider that commencing operations using only a fluid mark will not result in the intended outcome. Thus, even a fresh and innovative company should begin with a traditional trademark and then later consider incorporating mutating elements when seeking brand acknowledgement from the public.
Periodic updates of a traditional mark – such as a change of colour or its use on a diverse range of goods – would be insufficient for it to be considered a fluid mark. Fluid marks must include non-static and non-constant elements.
The evolution of trademarks includes certain naturally occurring elements of change. Mark owners will often consider applying some alterations to the original appearance of their marks following years of continued use by updating the design or applying different colour combinations. However, the trend for such alterations took off with advances in technology and social media, and original marks began to be frequently presented through different media or with different backgrounds.
The intrinsic nature of fluid marks requires constant modification. The use of a fluid mark may be limited to a short period for which registration of each possible variation, combination or appearance of the trademarks would be inadvisable in light of time and cost implications, since obtaining a registration certificate may take from four months to a year or more and provides only a 10-year validity period.
While registering a slogan may be quicker and less expensive, in Mexico such protection is available only for phrases. Thus, a design or other element may not be registrable as a slogan, which rules out slogan registration as a significant alternative for clients wishing to protect such marks.
In light of this, clients must be aware that it will take more than one registration to protect a fluid mark. Continuous clearance checks should be conducted in order to determine that no third-party rights are being infringed by a proposed alteration.
Registration for the foundation mark should be secured as a word mark, design mark or combined mark to allow the client to prove use, as all modifications will derivate from this source. For example, a word mark can be used in variations of typography, size or colour, meaning that it could constitute the basis of a fluid mark and a client could incorporate sequences of images or drawings that would ultimately evidence the basic mark. One famous example is the Google doodle, which changes regularly, but consumers continue to perceive a subjacent main brand in the word ‘google’.
Each specific case would require different complementary registrations, which could include slogans, design marks, combined marks and copyrights. In the end, it would depend on how the client intends to use the fluid mark and how much fluidity it is seeking, as variations can be as broad as seasonal changes, commemorative images, daily events or continuously changing looks and designs. Nonetheless, in Mexico basic registration constitutes the constant element of the intended fluid mark. This grants clients alternatives for the enforcement of their rights and helps to avoid the possible loss of a mark, since owners must use their registrations as filed or they will become vulnerable to cancellation actions on grounds of non-use.
Proving use may be one of the most delicate issues for fluid marks, since in order to avoid cancellation, use must be made within a three-year period according to the nature of the corresponding goods or services. For automobiles an invoice indicating the sale of two or three cars a month may be enough to prove use, but for other goods (eg, food) much higher sales numbers might be necessary. Accordingly, if a mark is used only once for a specific event or season, and is then repeatedly modified for the next event or season to suggest to consumers that the mark belongs to a company keen to reinvent itself as modern and cutting edge, use may not be easy to prove, which is why basic registration is required.
Pretending to use a fluid mark may suggest to the client that its marketing is being taken seriously, allowing it to plan in the short, medium and long term, while waiting for other protection alternatives to become available (eg, copyright protection).
If a fluid mark includes diverse designs, it may be worth considering registering the two-dimensional drawings as works of art; these copyrights can then be used to claim against third-party unauthorised use. Registration as a collection of drawings could be relatively easy to handle by trimester or semester.
On the other hand, copyrights are not linked to a specific good or service, and while their scope of protection is the artistic aspect of the drawing and not any directly commercial or lucrative feature, they offer clients the possibility of filing actions against possible infringements.
Protection through copyright is advisable for clients with frequently changing designs. Registering a collection of alternative appearances (eg, drawings) will provide complementary protection to the basis trademark registration.
Legislation has been affected by current practices and trends. The courts will help to set the applicable criteria for Mexico and may seek guidance from foreign legislation which has already addressed this matter.
While fluid marks may disrupt the traditional concepts of a trademark, clients will continue to innovate their marketing strategies and seek alternatives for the adequate protection of their rights.
Registration is still needed to bring actions in Mexico. Therefore, the basis of a distinctive sign should be registered in order to:
- increase the chances of success of any potential actions against infringement;
- preserve the seniority of the original brand;
- avoid possible cancellation actions on grounds of non-use; and
- analyse any available complementary registrations for broader protection.
It is vital that brand owners and their counsel work closely to determine the best way to protect their marks, products and services in order to ensure that they have the best and widest possible protection, including for the fluid marks in their portfolio.