Mexico

Mexico IP office's new online platform; Daren Tang appointed WIPO director general; INTA mental health webcast – news digest

In our latest round-up, we look at Puma’s Olympics trademark application being rejected, Aon launching an IP risk platform, the Spanish Patent and Trademark Office creating a coronavirus time capsule, and much more.

Mexico IP office's new online platform; Daren Tang appointed WIPO director general; INTA mental health webcast – news digest
Mexico joining the Hague System; a game changer for international design protection?
19 Mar 2020

Mexico joining the Hague System; a game changer for international design protection?

Earlier this month, Mexico deposited its instrument of accession to the Hague Agreement at WIPO. The move is significant in WIPO’s aim to create a global system for the protection of industrial designs.

ICANN cancels Mexico meeting; Coronavirus trademarks; UpCounsel returns – news digest
21 Feb 2020

ICANN cancels Mexico meeting; Coronavirus trademarks; UpCounsel returns – news digest

In our latest edition, we look at Canada enacting plain packaging, the acquisition of Forever 21, serial trademark filer Michael Gleissner still owing significant costs at the UKIPO, and much more.

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23 Apr 2020

Procedures and strategies for anti-counterfeiting: Mexico

There are several legal instruments available which carry significant benefits to those who choose to fight back and protect their intangible assets. Read more

3 Apr 2020

Something to declare: how an IMPI finding can help avoid stand-offs

Differences in the treatment of well-known and famous marks create pitfalls for the unwary. An administrative declaration is the best option, but obtaining one can be burdensome. Read more

1 Apr 2020

Mexico joins Hague design registration system

Mexico has deposited its instrument of accession to the Geneva Act of the Hague Agreement, bringing the number of members to the Hague design registration system up to 74. This is likely to have a significant impact on the number of Hague designs being applied for. Read more

17 Mar 2020

Trademark procedures and strategies: Mexico

The current administration is planning on reforming the current legal framework. Read more

Anti-Counterfeiting

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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

27 Nov 2018

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. Read more

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

Brand management

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23 Dec 2019

Fast-moving change for FMCG industry: how to protect and enforce your IP rights

Changes in consumer preference and behaviour have transformed the fast-moving consumer goods industry. IP rights are fundamental to the success strategy of any consumer goods company, enabling brand owners to protect their brands and consumers from imitations. Read more

22 Oct 2019

Are major brands stealing expressions of folklore in Mexico?

News outlets have focused on the use of expressions of folklore by fashion brands. In this guest post, a local expert argues that, with companies currently operating on the right side of the law, protecting these expressions against misuse belongs to the state. Read more

1 Oct 2019

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. Read more

30 Sep 2019

Unfair competition in Mexico: how to play by the rules in advertising’s commercial battles

Competitive advertising strategies should prompt healthy commercial battles and bring out the best in advertising, yet some still use advertising to confuse and mislead customers. Mexico’s unfair competition legislation defends the rights of victims to dubious advertising practices. Read more

Enforcement and Litigation

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3 Feb 2020

Corona beer or Coronavirus? How a brand should handle potentially damaging mix-ups

While there is cause for alarm in many industries whenever a potential new pandemic arrives, one company has found itself in the spotlight for a different reason following the coronavirus outbreak – the Corona beer brand. Read more

11 Dec 2019

USMCA given green light; significant GI changes now a step closer to reality

The Canadian, Mexican and US governments have signed an amended version of the USMCA, meaning that ratification is a significant step closer – with the deal highlighting what IP concessions the Trump Administration will expect in future trade deals. Read more

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

Government/Policy

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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

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

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

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”. Read more

Law Firms

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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.

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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

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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

3 Aug 2016

An IP marketing revolution? Changing attitudes to marketing in Latin American law firms

With an increasingly competitive IP legal market in Latin America, law firms are having to adapt and grow their marketing activity to stand out from the crowd. While little attention has been paid to marketing strategies in the past, today sees significant investment being made to effectively cut through the cluttered IP market. This week, the <i>WTR 1000</i> research team looks at how Latin American IP law firms, big and small, have evolved their marketing in recent years.

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IP Offices

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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

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

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.

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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.

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Online

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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

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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

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5 Jun 2014

Cartier recovers domain names under '.mx' policy

In two separate domain name dispute proceedings brought before WIPO, French jeweller Cartier International AG has obtained the transfer of two ‘.mx’ domain names under the Dispute Resolution Policy on ‘.mx’ Domain Names, a variation of the UDRP. The decisions highlight the fact that trademark holders should closely monitor their brands in all ccTLDs.

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12 Jul 2010

Campaign to promote '.mx' domain name registrations launched

NIC Mexico has launched the "Let's Be More '.mx'" campaign to promote '.mx' domain name registrations. As part of the campaign, NIC Mexico is offering domain name registrations directly under the '.mx' extension at a reduced fee. It is likely that some third parties will see this as an opportunity to take advantage of any available domain names that may infringe trademark rights.

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Portfolio Management

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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

25 Feb 2019

Challenge, reform and opportunity for Mexican business – a legal perspective

Mexico’s unique business position makes it an attractive investment location. While this brings challenges, it also signals opportunity with the reform of the Industrial Property Law. Read more

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. 

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Trademark law

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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

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

4 Apr 2018

Amendments to Industrial Property Law: what trademark owners and applicants need to know

The Mexican Senate has approved a bill that will substantially amend the provisions of the Industrial Property Law relating to trademarks. This update provides a summary of the main changes.

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20 Mar 2018

Enforcing and terminating franchise agreements in Mexico

As part of our deep dive into franchising rules in Asia and South America, we outline the rules that govern enforcement and termination of franchise agreements in Mexico. Read more