Mexico

Hugo Boss accused of bullying, Mexico IPO enters logo debate and fake shopping apps discovered: news round-up

In our latest round-up, we look at a brand owner claiming the IPO “made a mistake” in granting their mark, an Indian shopping site launching a new anti-counterfeiting programme, and much more.

Hugo Boss accused of bullying, Mexico IPO enters logo debate and fake shopping apps discovered: news round-up
10 Oct 2018

USMCA “breaks new ground” in geographical indications policy, contends GI consortium

The Consortium for Common Food Names has praised the new USMCA trade deal, claiming it “marks a sea change” in GI policy. In a strongly-worded statement, it also hits out at the EU for “monopolising common names and terms”.

Latest

View all
12 Aug 2019

IP owners may be awarded more than minimum damages based on ‘40% rule’

A Circuit Court has held that judges can impose both compensatory damages for the loss suffered and punitive damages based on the ‘40% rule’ under Article 221bis of the Mexican Industrial Property Law. Read more

29 Jul 2019

Non-traditional marks in Latin America: the current landscape

The acceptance of non-traditional trademarks has increased in most Latin American jurisdictions in recent years. We provide an overview of the current state of play. Read more

17 Jul 2019

Healing confusion – choosing the correct name for pharmaceutical trademarks

Similarity among prescription drug names should be avoided, as the potential confusion carries a risk to consumer health. Bringing the best pharmaceutical trademark to market can be arduous, but it will assist in the safe prescription of medication. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: Mexico

The Official Database for Mexican Trademark Registrations of Mexican Customs is designed to allow rights holders to ask Customs to record information about their registered trademarks in Mexico, so that the administrative authorities can identify counterfeit goods being imported into the country in violation of such registered trademarks. Read more

Refine content by:

Anti-counterfeiting

View all
24 May 2018

Procedures and strategies for anti-counterfeiting: Mexico

Officers at Mexico’s 49 customs offices inspect the contents of containers with Mexico as their final destination in order to detect counterfeit merchandise. Because the authorities cannot commence proceedings against counterfeit goods, rights holders must file corresponding legal actions. Read more

11 Apr 2018

Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern. Read more

13 Mar 2018

Procedures and strategies for pharmaceutical brands: Mexico

There is no clear link between the IP Law and the Health Law and their regulations regarding conflicts between registered trademarks and marketing authorisations or distinctive names. IMPI examiners usually consider the three-letter rule when analysing the similarity of pharmaceutical trademarks. Read more

1 Mar 2018

Protecting your brand in Mexico – how to avoid the unexpected

Over the past two decades, Mexico’s enforcement framework has improved immeasurably, although challenges remain. Trademark owners should consider a number of strategies in order to avoid any unpleasant surprises. Read more

Brand management

View all
29 Aug 2018

Can fluid marks be considered part of a client’s IP portfolio in Mexico?

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. Read more

29 Jun 2018

Symbols of the rich and famous: challenges for fashion and luxury brands

Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place. Read more

18 Jun 2018

“Providing customers with what they want is one of the best ways to reduce piracy”: inside Grupo Televisa’s enforcement efforts

How the Mexican media giant approaches brand and content enforcement. Read more

1 May 2018

Know your rights: grounds for ownership and opposition under a Mexican trademark licence

Mexican law follows international standards with regard to trademark licensing, and licensors can benefit from a licensee’s use of their mark even where the agreement has not been recorded. However, the local rules governing ownership in these circumstances are less clear. Read more

Enforcement and litigation

View all
12 Aug 2019

IP owners may be awarded more than minimum damages based on ‘40% rule’

A Circuit Court has held that judges can impose both compensatory damages for the loss suffered and punitive damages based on the ‘40% rule’ under Article 221bis of the Mexican Industrial Property Law. Read more

29 Jul 2019

Non-traditional marks in Latin America: the current landscape

The acceptance of non-traditional trademarks has increased in most Latin American jurisdictions in recent years. We provide an overview of the current state of play. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: Mexico

The Official Database for Mexican Trademark Registrations of Mexican Customs is designed to allow rights holders to ask Customs to record information about their registered trademarks in Mexico, so that the administrative authorities can identify counterfeit goods being imported into the country in violation of such registered trademarks. Read more

28 Jan 2019

Litigation procedures and strategies: Mexico

The relevant legislation for trademarks in Mexico is the Industrial Property Law and its recently amended regulations – the new provisions entered into force on 10 August 2018. The amendments involve substantial changes to Mexico’s IP system. Read more

Goverment/policy

View all
29 Oct 2018

Mexican trademarks and the Commercial Treaty of North America

The new North American Free Trade Agreement includes stronger measures against counterfeiting and piracy, including the ability to stop the entry and exit of suspected counterfeit products. Read more

24 Jul 2018

“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

​​​​​​​Law firm practitioners in jurisdictions that have adopted the Madrid Protocol in recent years have shared their experience in an exclusive survey. While some praised the system, other were scathing about its impact. Read more

Law firms

View all
1 Nov 2017

Four years on – how Mexico stepped up to Madrid

It is now four years since Mexico officially ascended to the Madrid Protocol. We examine how local practitioners have been adapting to this new trademark ecosystem and see what common issues are arising Read more

IP offices

View all
6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

20 Oct 2017

Mexico shows robust filing figures, as services overtake goods for first time: exclusive data analysis

In World Trademark Review’s latest country data report, we take a look at Mexico and how brands fare in the country. Read more

16 Feb 2017

Implementation of opposition proceedings - an update almost six months on

On August 29 2016 opposition proceedings became available in Mexico. Almost six months on, this update considers how opposition proceedings have been implemented by IMPI. It is expected that the first trademark applications against which oppositions have been filed will receive a final resolution from IMPI by late 2017. Read more

20 Jan 2017

Estimation of notoriety or fame by IMPI will help prevent registration of confusingly similar marks

Since the coming into force of the 2005 amendments to the Industrial Property Law, IMPI had stopped estimating the notoriety or fame of trademarks and relied only on declarations of notoriety or fame. However, IMPI has now begun to estimate the notoriety or fame of marks, alongside issuing such declarations. With this change, the estimation of notoriety or fame will become an important offensive weapon to prevent the registration of confusingly similar marks in all classes. Read more

Online

View all
1 Jan 2018

Mexico: Cat and mouse: how rights holders chase online infringers

The anonymity offered by the Internet is a significant lure for infringers. However, despite the online landscape being largely ungoverned, Mexican rights holders can still take steps to protect their intellectual property Read more

1 Mar 2017

Mexico: Expansion of domains in Mexico

Managing domain names involves maximising business opportunities while protecting against infringement. A clear internal domain name policy can help to reconcile these aims Read more

Portfolio management

View all
29 Aug 2018

Can fluid marks be considered part of a client’s IP portfolio in Mexico?

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. Read more

31 Jul 2018

Amendments to Industrial Property Law due to come into force - key features explained

Earlier this year, the Mexican Senate approved a decree which introduced significant amendments to the Industrial Property Law. This update highlights the key changes introduced by the decree, which is due to come into force on 10 August 2018.  Read more

29 Jun 2018

Symbols of the rich and famous: challenges for fashion and luxury brands

Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place. Read more

18 Jun 2018

“Providing customers with what they want is one of the best ways to reduce piracy”: inside Grupo Televisa’s enforcement efforts

How the Mexican media giant approaches brand and content enforcement. Read more

Trademark law

View all
1 May 2019

Protecting fashion and cultural expressions

Protecting the knowledge and traditional cultural expressions of different cultures and indigenous communities is a complex task. Opinions are divided, but one route may involve IP rights to protect traditional forms of innovation and creativity. Read more

1 May 2019

Protecting fashion and cultural expressions

Protecting the knowledge and traditional cultural expressions of different cultures and indigenous communities is a complex task. Opinions are divided, but one route may involve IP rights to protect traditional forms of innovation and creativity. Read more

28 Jan 2019

Litigation procedures and strategies: Mexico

The relevant legislation for trademarks in Mexico is the Industrial Property Law and its recently amended regulations – the new provisions entered into force on 10 August 2018. The amendments involve substantial changes to Mexico’s IP system. Read more

27 Dec 2018

Mexican trademark registrations under Madrid System – convenient solution, but no guarantee

The Madrid System can be used as a simple solution for registering trademarks worldwide. However, it does not guarantee that a trademark will be accepted in all designated countries. Read more

Find an expert

Susan Okin Goldsmith
Partner
East Brunswick NJ, United States
McCarter & English LLP