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”.

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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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

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

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Anti-counterfeiting

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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

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

18 May 2017

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 in order to obtain the seizure of illegal goods. Read more

Brand management

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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 Mar 2018

Franchising: a global guide to brand monetisation

In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America. Read more

1 Jan 2017

Brand monetisation: an industry best practice guide

In October 2016 World Trademark Review convened a high-level leadership summit to discuss and strategise best practice for brand monetisation efforts. Here we present the key discussion points and takeaways 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 WTR 1000 research team looks at how Latin American IP law firms, big and small, have evolved their marketing in recent years. Read more

Enforcement and litigation

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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 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

12 Apr 2018

United States slides, Germany continues to rule: counsel rate court systems across the globe

Despite being key litigation battlegrounds, counsel confidence in the court systems of China and the United States remains shaky.  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

Goverment/policy

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8 Jun 2016

New procedure for opposing trademark registrations

Opposition procedures to trademark registrations as they exist in other jurisdictions have never been included in the Mexican industrial property legal system. However, a reform of the Industrial Property Law was approved by Mexico’s Federal Congress between November 2015 and April 2016 and will include such a procedure in the trademark registration process. Read more

Law firms

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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 Read more

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

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

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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 Read more

Portfolio management

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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 Mar 2018

Franchising: a global guide to brand monetisation

In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America. Read more

1 Mar 2018

Why local counsel is key to a strong filing strategy in Mexico

Rights holders seeking trademark protection, whether on a national or international basis, should consult local counsel in order to formulate a filing strategy that holds up to Mexican customs and practice. Read more

1 Nov 2017

Mexico: Make your product pop – but make sure it is well protected

Products need innovative strategies to stand out on shop shelves, especially in the food and beverage sector. While such marketing can increase sales, it also risks compromising trademark protection Read more

Trademark law

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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. Read more

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

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

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Charmayne Ong Poh Yin
Partner
Kuala Lumpur, Malaysia
SKRINE