Mexico. Important news for brands

On May 18, 2018, they were published in Mexico, in its Official Gazette of the Federation (DOF), the Reforms and Additions to the Industrial Property Law (LPI) regarding trademarks. The Decree by which the modifications are promulgated will come into force 60 days from its publication, that is, around August 10, 2018.

Mexico is a main jurisdiction in internationalization projects for Spanish companies and clients. The truth is that the Mexican legislator, as well as our colleagues in the exercise of their profession, have made an enormous effort to modernize trademark practice in recent years.

In general terms, it seems that the Mexican legislator has intended, in addition to updating its trademark legislation, consolidate the opposition procedure, which is barely two years old, as well as influencing such important principles in the trademark area such as “bad faith” as an impediment to registering a trademark and/or clarifying some issues that remained very undetermined in practice, such as, for example, the mandatory use by the owners.

As a first relevant mention, it should be noted that the brand concept has been expanded to accommodate non-traditional brands (for example, holograms, sound marks or smell marks), collective and certification marks, or even the “trade-dress” which, although it is not quoted literally with said Anglo-Saxon expression, the new wording of the law allows its protection.

As an exception to absolute registration prohibitions, the possibility of registering trademarks that suffer from lack of distinctiveness (by genericity or descriptiveness) provided that through their use in the market they have acquired “secondary meaning".

You can request a notoriety statement of an unregistered trademark, for which, before the Decree, it had to be registered.

In resolving conflicts or obstacles due to risk of confusion, the IMPI will begin to accept letters of consent or coexistence agreements. However, it seems that they may not be admitted in cases where there is an absolute identity.

Following a more Anglo-Saxon trend and also in line with the well-known ruling of the Court of Justice of the EU “IP Translator", - which jurisdictions outside the EU are paying attention to -, the Mexican legislator is in favor of specifying the statements of products and services and therefore, general statements will not be admitted. If we add to this the new Declaration of Use requirement to which I will refer later, it seems prudent to us, in a country that is usually the main one for Spanish clients, to determine ab initio the most timely and convenient application protection strategy.

The reason for existence of trademarks and the means by which they materialize is their use, and in fact, most of the world's laws incorporate a obligation to use trademarks. Well, one of the most relevant issues that the new Decree incorporates is precisely the obligation for all owners of the granted trademarks. from the date of entry into force of the modifications, to present a Declaration of Use of their brands starting 3 years from the date of registration. According to our main sources, such a declaration could also be required with each renewal, so in Mexico the use of a trademark would gain essential importance when defining a protection strategy. Failure to comply with this new requirement would cause its cancellation.

To date, another controversial issue regarding use was the need or not to incorporate a date of first use in Mexico when applying for a trademark, because in reality the application form did not contemplate such a possibility, and yet, it incorporated a sort of of "tacit presumption of declaration of intention to use”. Well then, Starting in August, if you intend to claim a date of first use in a trademark application, said date will have to be included in the form itself.. And in the absence of a date of first use, then the request may be interpreted as implying a declaration of intention to use.

Thus, recovering the principle of “bad faith” that I referred to at the beginning of this text, the Decree incorporates it as a cause for opposition and cancellation of a trademark. Likewise, oppositions gain binding force.

We are convinced that these developments will result in additional efforts to motivate sentences and resolutions that will lead Mexico to greater progressive specialization of Offices and Courts in trademark matters.

Author: Cristina Arroyo