A short time ago, on 18 May 2018, Mexico’s Official Journal of the Federation published Amendments and Additions to the Industrial Property Act affecting trade marks. The Decree containing these changes will enter into force 60 days after publication, i.e., on around 10 August 2018.
Mexico is a primary landing place for Spanish companies and clients in their internationalization projects. The fact is that in recent years Mexican lawmakers and our colleagues have made huge efforts to modernize the practice of the profession and trade mark practice generally.
Broadly speaking, Mexican lawmakers would appear to have taken aim not only at updating the country’s trade mark legislation, at consolidating the barely two-year-old opposition proceedings, but also at impinging on such key trade mark law principles as “bad faith” as a bar to registering a trade mark and/or at settling uncertainties attaching to certain aspects that were highly ambiguous in practice, such as compulsory use by owners.
Firstly, and significantly, the concept of what a trade mark is has been expanded to include non-traditional marks (e.g., holograms, sound marks, and olfactory marks), collective and certification marks, and even trade dress as understood in the law of English-speaking countries, which will become registrable under the new wording of the law, though it is not referred to literally by that name.
Also, the possibility of registering generic or descriptive trade marks lacking in distinctiveness as an exception to absolute grounds for refusal is recognized where a trade mark has acquired secondary meaning through its use in the marketplace.
It will become possible to request a declaration that an unregistered trade mark is well known; before the Decree, prior registration was required.
The Mexican Institute of Industrial Property (IMPI) will begin admitting letters of consent and coexistence agreements as means of dispute resolution and settling cases where an obstacle posing a likelihood of confusion has been encountered. Nevertheless, it appears that they may not be admissible in the case of identical trade marks.
In line with practice more common in English-speaking jurisdictions and the Court of Justice of the European Union’s oft-cited “IP Translator” judgment, which has caught the eye of jurisdictions outside the EU, Mexican lawmakers have come down on the side of specific descriptions of goods and services, and hence general class headings will no longer be accepted. Taken in conjunction with the new requirement for declarations of use mentioned above, we think it will be wise to decide on an appropriate trade mark protection strategy for Mexico, generally of great importance to Spanish clients, from the very outset.
Use is the reason for being and the purpose of trade marks and what makes a trade mark a reality, and in point of fact most countries’ legislation includes a use requirement for trade marks. In this regard, one of the most relevant aspects included in the new Decree is the requirement – from entry into force of the amendments – for owners of trade mark registrations to submit Declarations of Use for their trade marks starting three years from the registration date. Our primary sources have told us that the declaration of use could be required with each renewal, in which case the question of use will become an essential component of any trade mark protection strategy in Mexico. Failure to comply with this new requirement will result in cancellation of the trade mark.
Another controversial question regarding trade mark use to date has been whether or not it is advisable to include a date of first use when filing a trade mark application in Mexico, because the trade mark application form did not in fact provide for doing so yet nonetheless constituted a sort of “tacit presumption of an intent to use declaration“. Beginning in August, anyone seeking to claim a date of first use for a trade mark filing will have to include that date on the application form itself. If a date of first use is not stated, the application may then be deemed to be a “tacit intent to use declaration”.
Coming back to the principle of “bad faith” referred to earlier, it is included in the Decree as grounds for opposition and for cancellation of a trade mark. In addition, the binding effect of oppositions has been strengthened.
From our perspective, these changes will proffer additional grounds for judgments and decisions that will help Mexico gradually increase the specialisation of the IMPI and the courts in trade mark matters.
Author: Cristina Arroyo
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