17 Mar
2020

Trademark procedures and strategies: Mexico

Basham, Ringe y Correa SC

Legal framework

Registration and enforcement of trademark rights in Mexico is regulated by a framework of local laws, regulations, treaties and precedents on specific legal loopholes or procedural matters (which only become binding once five rulings are issued unopposed). Prosecution of applications, protection and maintenance of trademark registrations, as well as dispute procedures are administered in accordance with the Mexican Industrial Property Law and its regulations. The current administration is planning on reforming the current legal framework. Although a bill is in place to do this, it is as yet unknown which provisions will survive the scrutiny of Congress or even if or when it will happen.

Mexico is a party to several treaties, which either directly regulate trademark matters or have been replicated in domestic laws:

  • the Paris Convention for the Protection of Industrial Property;
  • the North American Free Trade Agreement (which remains in force pending ratification of the new agreement between the United States, Mexico and Canada);
  • the Nice Agreement Concerning the International Classification of Goods and Services;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

Unregistered marks

Rights

Mexican law and practice usually favours registered rights in terms of protection. However, certain provisions in the IP Law have created a hybrid system where rights over unregistered marks may arise.

When a party has applied for a trademark owned or previously used by another party, the rightful owner or senior user of an unregistered trademark may file an opposition, claiming bad faith and providing sufficient evidence regarding fame, rightful ownership or prior use of the trademark in Mexico or abroad. If successful, the opposition procedure could result in a provisional refusal.

The rightful owner or former user of an unregistered trademark may file a cancellation action against a registered trademark that is confusingly similar or identical to their own, claiming and providing evidence of:

  • prior use;
  • application or registration in bad faith; or
  • that the trademark was applied for and registered without the consent of the rightful owner from another jurisdiction.

Unregistered rights through use

In terms of use as a means of establishing unregistered rights, the IP Law indicates that the party claiming to have used the trademark in the past must demonstrate use prior to the application date or the declared date of first use. According to the IP Law’s description of ‘trademark use’, the rightful owner or prior user of a trademark should demonstrate on the basis of satisfactory evidence that the goods covered by the trademark are made available in the amount or way that corresponds to the practice and customs in the market.

A party that has used a trademark in good faith prior to the filing rights over a registration, and is able to demonstrate it, will not be subject to the prohibitions inherent to the protection of a registration by a third party. This is an exception to an infringement action which will not be successful against said good-faith user.

Registered marks

Ownership

Any individual or company – national or foreign – may use trademarks on goods or services. There is no prohibition or limitation as to who may apply for or own a mark.

Power of attorney

A representative is not required to file a power of attorney when filing an application and will be considered as the registered representative throughout the prosecution. However, in an opposition procedure, or a reply to a provisional refusal, and if the person replying is not registered as a representative, a power of attorney is required.

There is no need for notarisation or legalisation of a power of attorney used for trademark prosecution. In any case, an original power of attorney may be entered into a registry managed by the Mexican Institute of Industrial Property (IMPI) and a copy of the resulting certificate could be used instead.

Protection – prohibitions for registration

After a 2018 amendment, trademarks no longer need to be visible and may be registered if perceptible by any sense while capable of being represented in such a manner that the subject matter of protection is well defined. Accordingly, non-traditional marks (eg, sounds and scents) are now registrable as long as they function as source identifiers. Likewise, descriptive or common use terms as well as three-dimensional common forms, isolated letters, digits and colours, and non-distinctive trade dress, are suitable for registration if secondary meaning is demonstrated.

The IP Law prohibits the registration of trademarks that go against public order or customs. However, the law provides no definition in this regard and it is therefore up to each appointed examiner to keep this in mind.

The IP Law sets forth specific hypotheses as prohibitions for registration. Some of the most common are:

  • names commonly used for goods or services;
  • words descriptive of the kind, quality, quantity, composition, value or origin of the goods or services;
  • official flags, shields, emblems of any country, state or municipality, without authorisation;
  • geographical indications, designations of origin, signs or names of places known for their fabrication of certain goods or the lending of certain services;
  • names or pseudonyms of people who have acquired such a well-known status that the use of their name could create a false belief of association;
  • titles of copyrighted works and any of their elements or characters;
  • trademarks identical or confusingly similar to notorious or famous trademarks; and
  • trademarks identical or confusingly similar to prior applications or registrations.

Procedures

Examination

The IP Law does not foresee multiclass applications. It is not necessary to file a priority document at any time during prosecution.

An application is usually scheduled for examination three to five months after filing. Formal examination is conducted to determine whether an application meets formal requirements, including proper specification of goods or services. The IMPI then conducts substance examination based on likelihood of confusion and inherent registrability. If there are no grounds for refusal, registration will be granted. A hassle-free, unopposed and fully compliant trademark application will take from four to six months to be granted registration. Electronic filings are encouraged to reduce the time of prosecution.

Any obstacle for registration will be raised and notified through an official communication. The applicant has a two-month period to respond, which can be extended for two additional months. Failure to respond to an office action will result in abandonment.

IMPI official actions and related writs are available through its online database. Once an application is granted registration, it will be published in the Official Gazette, which is accessible online.

The examiner’s decision to reject an application can be challenged before the hierarchical superior of the issuing branch of the IMPI within 15 business days, or before the Specialised Chamber in IP Matters of the Federal Court of Administrative Justice (SEPI) within 30 business days, from the date of notice.

Opposition

An application will be published for opposition purposes in the Official Gazette within 10 business days following its filing. Any interested party may file an opposition within 30 calendar days.

The opponent may rely on any grounds provided by law for the rejection of an application. A trademark may be opposed and effectively refused if proven to be confusingly similar to a prior registration or application, or if it is descriptive.

Unlike other jurisdictions, use is irrelevant in an opposition. However, if the IMPI issues an office action citing the registration serving as basis in the opposition, the applicant will be entitled to seek a non-use cancellation. A separate legal action will be initiated for such purpose.

An opposition procedure is independent of the prosecution and will not suspend it or prejudice the result of the substantive examination. The lack of response from the applicant to an opposition will not result in the abandonment of the application.

After an opposition is filed, the IMPI publishes it in the Official Gazette and the applicant has a one-month term to respond to the opposition. Evidence in opposition procedures will be submitted alongside each initial writ. The parties will be granted a two-day term to file written arguments.

Registration

Applications that have completed formal and substantive examinations are either denied or granted registration. The granting of registration is published in the Official Gazette.

Evidence of use is not needed before or during prosecution. Nevertheless, a declaration of use will be filed during the three months following the third anniversary of the registration. Failure to file said declaration will automatically result in the lapse of the registration.

A trademark is registered for a 10-year term from the filing date and can be renewed for further 10-year terms. Failure to renew the registration within the six-month period following the renewal date will result in the lapse of the registration. Declarations of use are required on renewal.

Partial cancellations are not allowed in Mexico.

Removal from register

The IP Law provides the following grounds for a nullification or annulment action:

  • an incorrectly granted trademark (no statute of limitations applicable);
  • a registered trademark that is identical or confusingly similar to a mark previously used in Mexico or abroad or a previously granted or applied-for registration in connection with the same or similar goods or services (five-year statute of limitations following publication of the registration);
  • a trademark registration that was obtained in bad faith (no statute of limitations applicable);
  • a registration that includes false information – the burden of proof relies on the complainant (five-year statute of limitations); and
  • a registration obtained by a party linked to the rightful owner of a trademark registered in a foreign country, without the owner’s consent (no statute of limitations applicable).

Further, there are several grounds for the cancellation or lapse of a trademark registration:

  • voluntary cancellation – when requested by a representative, special powers are required;
  • lack of renewal or declaration of use – if the renewal or declaration of use are not filed in a timely manner;
  • non-use cancellation action – an interested third party can pursue a cancellation action if a trademark is not in use after the third anniversary of its registration (the registrant must prove use of the mark during the three-year period immediately preceding the initial writ); and
  • cancellation of a generic mark – when the registrant caused or allowed a mark to become a generic name for the products or services that it covers.

Timeframe

It takes approximately three to six months to record renewals, licences, assignments and changes of name. It takes two to three years to obtain a ruling on a nullification or cancellation action at the IMPI; one year at the SEPI; and six months to one year for constitutional appeals before the Circuit Courts of Appeals.

Searches

Phonetic or design searches may be conducted for similar and identical marks per class. Although these searches may be conducted by users, the IMPI may also run its own searches on request.

Searches by owner or attorney-of-records are also available; there are no official fees associated with these searches and they are freely accessible through the IMPI’s online database.

Enforcement

Complexity

Complexity in enforcement depends on the circumstances of each case. Some circumstances that might affect the complexity of enforcing trademark rights in Mexico include the amount of infringing goods and their location (eg, at Customs).

Trademark owners may opt for an administrative proceeding (infringement action) or a criminal action for enforcement. Administrative proceedings are governed by the IP Law, its regulations and the Administrative Procedures Law, and are ruled over by the IMPI. In criminal proceedings, the infringing acts must meet the hypotheses listed as crimes by the IP Law (ie, counterfeiting). The Specialised Prosecutor’s Office will initiate a criminal investigation in order to determine whether a criminal action is viable.

Causes for an infringement action include:

  • claiming as registered an unregistered trademark;
  • the unauthorised use of a sign confusingly similar to a registered trademark, for identical or similar goods or services;
  • the unauthorised use of a registered trademark or a confusingly similar one, as part of a corporate name, or vice versa;
  • carrying out acts that may lead consumers to wrongfully believe that there is a link between a manufacturer, trader or supplier and the rightful owner of a trademark;
  • tarnishing the goods, services, activities or establishment of another individual or company; and
  • the unauthorised use of the trade dress of a product or service that may induce a consumer to wrongfully believe there to be a link to the rightful trademark owner.

The legal hypotheses for infringement also include unfair competition acts linked to IP rights and may be claimed alongside other hypotheses.

Interim relief is available to trademark owners, who may request that:

  • any infringing products, packaging, publicity, advertising or any such material be withdrawn from circulation;
  • the sale and use of infringing goods be prohibited;
  • infringing goods be seized and secured; and
  • the lending of services cease, or an establishment be closed.

The party requesting interim relief must guarantee possible damages to the defendant. The trademark owner must file an infringement action within 20 days following the imposition of the interim relief, at the risk of losing the guarantee to the defendant.

The remedies that a plaintiff may achieve through an infringing action include:

  • a declaration of infringement;
  • the imposition of a fine on the defendant;
  • a halt to infringing actions and/or destruction of seized infringing goods;
  • closing of an establishment; and
  • the prevention of future infringing actions.

These remedies may be achieved, ordered and executed through the IMPI.

A plaintiff in a successful infringement action may also seek damages through a civil action before a Federal Civil Court. The applicable legislation expressly states that said damages must be at least equal to 40% of the sale price at which the infringing goods or services were offered to consumers.

Timeframe for resolution

An infringement action can take from two to three years before the IMPI issues a ruling. The losing party may fight said ruling through a motion of review before the hierarchical superior of the issuing branch of the IMPI or an administrative dispute before the SEPI, which can take six to 18 months to reach a decision. This decision may be appealed through a constitutional action before an appointed Circuit Court of Appeals, which can take up to one year for a decision.

Ownership changes and rights transfers

The recordal of assignments, changes of name and licences with the IMPI is not compulsory. They are valid and binding among the parties even without recordal. Nevertheless, according to the IP Law, these agreements will be enforceable against third parties only if they are duly recorded with the IMPI. Only the use by a recorded licensee will be attributed to the mark owner.

There are, however, judicial precedents stating that use from an unrecorded licensee may benefit the owner if the latter proves to have control over such use. This interpretation is consistent with international treaties. Considering that there is no clear definition of ‘control’ and there is no consolidated and binding jurisprudence on this issue, it is highly recommended to record these agreements with the IMPI.

Either the original document or a certified copy by notary must be submitted to the IMPI alongside a Spanish translation. If the document is executed and certified abroad, it must be duly apostilled or legalised. In case of a change of name, the official document must be certified by the proper local authority and then apostilled or legalised.

Related rights

There are certain areas of overlap between trademark rights and other IP rights. While the IP Law and the Copyright Law do not specifically refer to cumulative protection of trademarks and copyrights, a logo, device or a combined trademark can be protected under copyright law provided that it has artistic value and meets the threshold of artistic creativity and originality.

Also, a two or three-dimensional trademark design that depicts shapes, lines or colours, or includes patterns, is suitable to be protected by an industrial design, either for aesthetic or manufacturing purposes. In such a scenario, it is advisable to first seek protection of the industrial design in order to avoid the possibility that a publication of the trademark could affect its novelty.

Online issues

Applicability to internet use

There are no specific provisions protecting trademark owners from unauthorised use of their marks in domain names, websites, hyperlinks, online ads or metatags.

Private, platform-specific or alternative dispute resolution procedures are available for trademark owners. Mexican law allows for any of these procedures to be effective among individuals and legal entities, if no legal provision is transgressed. Takedown procedures are usually considered and provided by online platforms working for and with Mexican internet users, usually requiring the trademark owner to demonstrate ownership of the related trademark rights.

Concerning domain names, while the ‘.mx’ registry, NIC-Mexico, provides a private dispute resolution procedure to trademark owners and internet users, domain name disputes are usually and effectively submitted to the WIPO Arbitration and Mediation Centre and ruled on by panellists in accordance with the ‘.mx’ Domain Name Dispute Resolution Policy and Rules.

Infringement actions before the IMPI may also be used by proxy against infringing actions that make use of internet resources. Interim relief has been used to block domain name registrations and specific content on third-party platforms and websites, with varying results.

Basham, Ringe y Correa SC

Paseo de los Tamarindos

400-A, 9th Floor, Col Bosques de las Lomas

Mexico City 05120

Mexico

Tel +52 55 5261 0400

Fax +52 55 5261 0411

Web http://www.basham.com.mx/

Gloria Niembro Castro

Associate

[email protected]

Gloria Niembro Castro has been with Basham, Ringe & Correa since 2009. She advises her clients on trademark and copyright matters, with a special focus on preventive protection strategies, drafting agreements, prosecution and litigation. 

She graduated with honours from Instituto Tecnologico Autonomo de Mexico in 2012 and holds a master’s in law from the Benjamin N Cardozo School of Law. 

Ms Niembro is admitted to practice law in the state of New York. She is an active member of the Mexican Group of the International Association for the Protection of Intellectual Property, as well as INTA and the Inter- American Association of Intellectual Property. 

Orlando Osio Sánchez

Associate

[email protected]

Orlando Osio Sánchez is an associate with Basham, Ringe & Correa’s IP department. His practice focuses on trademark and copyright consultancy, prosecution, preventive strategies, litigation and alternative dispute resolution, as well as IP rights enforcement for internet issues, including domain name disputes. 

Mr Osio Sánchez graduated with honours from Universidad Iberoamericana Puebla in 2013. He has worked with national and international market leaders in the fashion, entertainment, construction, banking, pharmaceutical, chemical and telecommunications industries. He is a member of the Mexican Association for the Protection of Industrial Property.