Contributed By Basham, Ringe y Correa S.C.
The law recognises trade marks as any perceptible sign that can identify products and services, slogans as any phrase used to advertise products, services and establishments and trade names as the names by which an establishment where products are services are sold is known. In addition, the law recognises collective trade marks as trade marks that are used by an association or society of producers or service providers to identify the products and services of their members. Certification marks also exist, which are trade marks whose use certifies compliance with certain qualities or characteristics of the products identified by the trade mark owner.
Mexico also recognises famous and well-known trade marks. The first are to be known by a majority (50%+1) of the consumer public. Well-known marks are those known to at least a portion of commercial circles, usually at least the people who normally deal with the respective kinds of products and services. Thus, for a trade mark to be considered 'famous' is usually a lot more difficult.
To have exclusivity over a trade mark, registration before the Mexican Institute of Industrial Property is mandatory. Trade names can have limited protection through use alone, but it is difficult to enforce as it is only understood to cover the 'effective clientele zone'. Trade names can be published rather than registered to establish a presumption of good faith in their adoption, which can be of some use in enforcing them.
In principle, the prohibitions to registering different types of trade mark are the same. However, the information on the trade mark that the applicant has to provide for each kind of mark does differ.
The Mexican trade mark register can be checked online through the database of the Mexican Institute of Industrial Property: www.marcanet.impi.gob.mx/marcanet.
For registering trade marks, there is just one registry where a trade mark application will be either granted or refused. There is no supplemental registry.
It is normal practice – and highly advisable – to search the registry for prior applications or registrations. Unregistered trade marks are not usually searched as they cannot be enforced and do not normally constitute an obstacle for registration.
For any mark, the applicant will need to provide their full, name, domicile, nationality and the products or services in which the mark may be used. National applications may only cover products or services of a single class and thus, more than one application may be required.
Use is not necessary to obtain registration, but if the applicant is already using the mark, it can be possible to claim a date of first use.
For word marks, designs, three-dimensional shapes and combinations thereof, it is enough to simply provide a specimen of the mark on the respective form. However, for sounds, smells, trade dresses and holograms, it is also necessary to provide a description and a visual representation. Sounds further demand the uploading of a file containing the specific sound, while smells may require the filing of a specimen.
Any individual or legal entity can obtain the registration of a trade mark. However, for collective trade marks, only an association of producers, providers or sellers of the respective goods and services can obtain registration. Similarly, certification trade marks can only be registered by legal entities such as companies or associations of certification. For certification marks including geographic indications, additional restrictions apply.
Letters and numbers, designs, three-dimensional shapes, smells, sounds, holograms, composite marks and trade dresses can all be registered as trade marks. Isolated colours cannot be registered by themselves, though they can be registered as part of another trade mark.
Mexican copyright law foresees rights that grant exclusivity over the titles of publications (ie, magazines, newspapers, etc), broadcasts (ie, tv or radio shows), the names and characteristics of characters (both physical and psychological), the stage names of individuals and groups dedicated to certain activities (eg, music performers) and certain advertising promotions.
Mexico does not allow multi-class applications. Once filed, the application is published for opposition for a one-month term. If an opposition is filed, the applicant then has a month to reply and both the applicant and opponent have two days to file counter-arguments. The filing of an opposition does not bind the examiner, who still has the control to decide if any objections or citations are raised. So even an application that does not receive an opposition can be refused.
After the opposition period the examiner will take up to a maximum of six months to either issue registration or communicate an objection. Formal objections (ie, issues with description of products) are usually communicated very quickly. If an objection is raised, the applicant will normally have approximately four months to reply and then the examiner will have another six months to review it and decide accordingly.
Commercial use is not necessary to obtain registration, but only to maintain it. However, if the applicant so desires, they can claim a date of first use if the trade mark is already being used.
Only a single mark is allowed per application. For holograms, the applicant is understood to have protection for the whole hologram as shown on the application.
While having an attorney is not legally necessary, it is advisable.
Usually, if no objections or oppositions are raised, registration can be obtained in four to six months. Otherwise, the timeframe will depend on the number and complexity of objections raised and the time the applicant takes to reply.
Typical attorney fees for a trade mark application are USD480 plus the 16% tax and government fees of approximately USD190 (these government fees can vary slightly due to the exchange rate).
Registration may be refused for the following reasons: descriptive character of the trade mark, lack of distinctive character of a three-dimensional form or hologram, isolated colours, deceptive nature of the trade mark, unauthorised exploitation of a work or the image, voice, name or signature of a person, unauthorised reproduction of flags or government insignia, bad faith, trade marks contrary to public order or public morals, denominations of origin or geographical indications, the names of places of private property, trade marks that infringe upon other legal dispositions (ie, regulations on the names and packaging of pharmaceutical products) and any artificial construction, translation or misspelling thereof.
As indicated above, if the examiner issues an objection, the applicant will normally have around four months to submit a reply. For objections based on the descriptive character of the trade mark or the lack of a distinctive character, acquired distinctiveness can be proven by submitting evidence along with the response and arguing accordingly. For trade marks infringing upon works, government insignia, denominations of origin or geographical indications or image rights or the names of places of personal property, objections can usually be overcome by filing some proof of authorisation. For instance, for a trade mark that has the name of a famous artist, the objection can be overcome by filing a signed letter from the artist.
The examiner will ex officio search for pending applications and registrations for similar trade marks, trade names or slogans, even if no oppositions are filed. The examiner will usually check as well for any potential prohibition on absolute grounds.
Anyone whose rights are affected by the application can file an opposition within a one-month term after the application is published. However, the examiner is not bound by the opposition and will still examine the application and decide if there are any grounds for refusing registration ex officio. Thus, the objective of an opposition is to try to persuade the examiner to refuse registration.
If an opposition is filed, the applicant will have a one-month term to reply (this is optional) and then both parties will have two days to submit additional arguments, if they so wish. This does not interrupt the examination process.
It is not possible to change the trade mark itself in any way. The goods or services can be clarified and specified, but never substituted or increased. Any new good or service is subject to a new application.
It is perfectly lawful to record assignments or licences for ending applications, regardless of whether or not the trade mark is in use.
One option is to file a motion to have the hierarchical superior of the examiner review the case. The decision issued in connection with the motion can also be appealed as per the next paragraph.
With or without previously seeking the motion, the applicant can file an appeal with the Federal Court of Administrative Justice, who will decide the case through a three-judge panel that solves only cases related to intellectual property. The decision issued on appeal can be taken up to the Federal Circuit Courts for a last review and, in some extremely rare cases with important constitutional issues, yet another review from the Supreme Court could be obtained.
Commercial use is a requisite to keep the registration, but not to obtain it.
Neither the trade mark nor the products can be divided. However, for Madrid designations, the examiner will assign a separate file and carry out a separate procedure for every class. Use needs to be declared three years after obtaining registration and with every renewal.
The term of protection is ten years from the filing date; subject to renewal, a six-month grace period is allowed. Renewal can only be obtained if the applicant declared under oath that the trade mark has been used in Mexico and that such use has been uninterrupted for three consecutive years.
A trade mark registration has no effect against the re-sale, distribution or advertising of the trade-marked product or service once it is lawfully introduced into commerce, including imports.
Mexico participates in the Madrid System. There are two important aspects to consider: firstly, Mexico does not accept licence recordings through Madrid; secondly, and more importantly, if a renewal of an international registration is made, the owner has three months from the date on which the World Intellectual Property Organisation (WIPO) informs the renewal to the Mexican Institute of Industrial Property to declare use of the trade mark – otherwise, the renewal will not have effect in Mexico.
A trademark registration can be found void by the Mexican Institute of Industrial Property if issued on the basis of false information indicated on the application form.
A trade mark must be used as registered or with slight modifications that do not alter the distinctive character of the mark. While this needs to be evaluated on a case-by-case basis, slight changes in colours or typography are usually tolerated. Any change that may alter distinctive character is subject to a new registration.
The 'r' within a circle – ® – is used to denote that a mark is registered; the legend “marca registrada” or the initials “m.r.” are also used. This is important as it allows for obtaining preliminary injunctions and even criminal prosecution in the case of infringement. These can only be used for trade marks that are registered in Mexico and using them on unregistered marks can result in a fine.
Any written assignment, with or without consideration, will work in terms of assigning a trade mark. There is, however, a restriction in that it is not possible to use assignments to circumvent the prohibition to register identical or confusingly similar trade marks. Thus, the assignor must convey all registrations for confusingly similar trade marks to the same assignee, or else the examiner may refuse to record the assignment. Mexico recognises contracts without consideration so the assignment does not need to contain any payment or other consideration in exchange.
The procedure involves executing and filing the respective assignment agreement and certain forms with the Mexican Institute of Industrial Property, who will then take around six months to examine the documents and issue the certificate attesting to the new ownership.
While it is not mandatory, the assignment has no effect against third parties unless it is recorded – thus, there are considerable risks if it remains unrecorded. For instance, the unrecorded owner cannot defend the registration or claim infringement until the assignment is at least filed for recording.
Certainly, a trade mark registration can be used to secure an obligation. Usually a lien is placed upon the registration. Another way to do this is through a trust or assignment by way of security. Of course, it can also be levied in execution. For example, it is not usual for the Mexican tax authorities to seize trade mark registrations from debtors.
In any case, the creditor must ensure that his/her rights are recorded with the Mexican Institute of Industrial Property or they will not be able to enforce them against third parties such as other creditors or good-faith assignees.
Both exclusive and non-exclusive licences are allowed. However, licensors should be careful about the conditions they insert on the agreement. If the agreement provides certain knowledge or instructions on how to conduct business then, in some cases, the licence will be considered as a franchise and that would subject the licensor to providing certain information on the licensor’s business to the licensee. Of course, the licensor needs to be the recorded owner of the mark. Indicating the specific applications or registrations being licensed and the specific goods or services subject to the licence is highly advisable to make the recording easier.
Essentially, this comprises executing the agreement and filing it along with certain forms. Then the Mexican Institute of Industrial Property will have around six months to review the document and issue the recording.
The most important risk during the gap between the licence being entered into and its registration is that the agreement does not have effects against third parties until recorded. For example, a good faith assignee would not need to keep the licence in effect.
The cancellation of the recording of a licence can only be obtained by mutual agreement between the parties or by means of a judge. Therefore, the licensor should bear in mind that in order to cancel the licence for a perpetual licence they would need to have either the licensee’s co-operation or an order from a judge.
Assigning the goodwill or anything else is by no means necessary for a licence/assignment to be valid.
Anyone who believes there is a reason for refusing registration and who believes his/her rights are affected may oppose. In practice, although examiners will allow oppositions from anyone who believes the marks should not be registered due to any of the prohibitions set forth in the law, most opponents are owners of prior trade marks.
The deadline to oppose is one month after the application is published for opposition.
Again, anyone who believes that there is a prohibition in the law and that his/her rights will be affected can oppose. An attorney is not needed, but advisable. Fees for filing an opposition are approximately USD500 plus the 16% tax and government fees of approximately USD290. The government fees for opposing an application are higher than those for filing the application itself – this was a decision taken by the Mexican government to discourage frivolous oppositions.
No discovery takes place, both the opponent when filing the opposition and the applicant when replying to it should identify and submit all evidence they may have. There is no motion or hearing nor is the examination process interrupted. Instead, the examiner will simply take the briefs and evidence submitted by the parties and consider them for the outcome of the examination. In other words, the opposition is not independent from the examination process – it is just a part of it with the purpose of helping the examiner decide if registration should be granted or not.
The only viable remedy the opponent has is to challenge the registration once it is issued. The opponent cannot normally appeal the examination. Instead a separate legal action must be initiated before the Mexican Trademark Office to have it declare the annulment or cancellation of the registration.
First, the infringement of a registered trade mark can give way to an administrative action before the Mexican Institute of Industrial Property, which will decide the case and, if it finds infringement, will impose considerable penalties on the infringer – this may include the seizure and destruction of infringing goods and related implements, fines exceeding USD100,000, temporary or permanent forced closures of the infringing establishment, etc. Every decision-finding infringement will also include an injunction ordering the cease of the infringing conduct; failure to comply with it involves criminal liability and much heavier fines. It is important to consider that damages are not awarded in this stage. Instead, once this action is concluded, the plaintiff can then file a civil complaint with a civil court and obtain damages for the infringing conduct found by the Mexican Institute of Industrial Property. So, first it is necessary to get a decision finding infringement and punishing the infringer for it and only then can damages be obtained.
In addition, certain kinds of infringement – namely, forging registered trade marks, dealing with products bearing forged trade marks and selling the products that bear them – can constitute crimes. There are two mens rea requirements that need to be proven: (i) the conduct must be knowingly made, and (ii) it must have been made with an intent to profit from it. If so, a criminal procedure can be initiated by filing a criminal complaint with the office of the Federal Public Prosecutor, which will investigate the claims and, if enough evidence is found, will exercise a criminal action to prosecute and punish those responsible for the conduct. Again, if the forbidden conduct is found, the owner of the registration would be entitled to damages. Criminal actions can only be exercised if the mark has been used with the indications of registration previously indicated.
Regardless of whether the trade mark owner chooses a criminal or an administrative course of action, a preliminary injunction can be obtained.
As indicated above, for initial administrative or criminal proceedings the relevant authorities are the Mexican Institute of Industrial Property and the Federal Public Prosecutor. For criminal actions, if the case keeps going, a federal control judge would control the legality of the criminal investigation and other pre-trial actions; then, if the case goes to trial it would be assigned to another judge for deciding the case.
In addition to the fines and other punishments already described, the decision contains an injunction that forces the infringer to desist under the threat of heavier fines and criminal prosecution. The fines imposed are considered tax debts and the tax authorities can enforce payment if it is not made, if necessary even proceeding to seize and liquidate the infringer’s assets for such purpose.
More importantly, once an infringement is declared, the plaintiff can then sue the infringer in civil court to obtain damages. The civil judge will use the decision and consider the commission of the infringement to be res judicata and, thus, the controversy will be limited to what the defendant needs to pay as compensation for having committed the infringing conduct. The law sets minimum damages at 40% of the sale price to the public of every infringing good or service sold.
Under Mexican law, the alleged infringer cannot start declaratory judgment proceedings.
In an administrative action, the decision can be challenged in the same way as a trade mark refusal – namely, the hierarchical superior, the Federal Court of Administrative Justice and the Federal Circuit Courts. For criminal cases, it would be a Federal Unitary Court, which is a one-judge court which hears criminal cases on appeal, and then a Federal Circuit Court. Then the Federal Circuit Courts would hear the case. In extraordinary cases, the Supreme Court could act as a court of last resort.
For civil trials, a federal civil district judge would hear the damages case, then a Federal Unitary Court and then a Federal Circuit Court. In some instances, the federal civil judge could have concurrent jurisdiction with the state judiciary; while these judiciaries change from state to state, they tend to have a similar composition as the federal judiciary.
These remedies are in principle only for registered trade marks. There are no prerequisites such as sending a letter, but this might be nevertheless helpful in either having the infringer desist willingly or at least showing that they continued to infringe with knowledge. Mediation and arbitration can be conducted by the Mexican Institute of Industrial Property, but this is rare as usually plaintiffs tend to be in a hurry to have the infringing goods and services out of the market and, furthermore, because infringers rarely co-operate.
The plaintiff does not need to be represented by a lawyer, but it is highly advisable. The criminal defendant, as in other countries, does have a right to counsel.
Interim and preliminary injunctions are available. In administrative action, the plaintiff would need to prove three things to obtain a preliminary injunction: (i) that the trade mark is protected (registered), (ii) that the infringement is occurring or is imminent, and (iii) that damages will be caused to the plaintiff – usually this is not difficult to establish prima facie. In addition, the plaintiff will need to post some form of security showing that they will respond for the damages they will cause to the defendant if no infringement is found. Typically, this done through a bond. Finally, the plaintiff will need to show that they have used the mark with the indications that it is registered, as previously described.
For criminal actions, the public prosecutor in charge of the case does not need to post any kind of security. However, depending on the measures to be taken in the injunction, especially if they may be restrictive on the defendant’s freedom, they need to be pleaded and granted before the control judge.
Aside from answering and denying the unlawful conduct, a defendant should provide an alternate hypothesis and proof that discredits the plaintiff’s case. One of the most viable options is to file a counterclaim to try cancel or annul the plaintiff’s registration and argue, therefore, that the plaintiff lacks legal standing to sue and that no infringement occurred.
In administrative actions, the plaintiff can request that the Mexican Institute of Industrial Property compel the defendant to produce evidence or information they may have – they would be constrained to do so under the threat of a considerable fine. A good alternative is to request that the infringing premises be inspected for evidence of the infringement. The public prosecutor is allowed to request the appearance of anyone related to the case and insist on co-operation in providing documents and information (except from the criminal defendant, who has no obligation to declare against himself).
Success depends heavily on the initial complaint. Every claim and every fact must be set out with as much detail as possible. The initial pleading should also detail all the evidence available and being submitted to support the claim. This is different from other proceedings – for instance, in civil trials, the evidence does not need to be pointed out and filed until later on, once the defendant has answered. Here, in principle, every item of evidence should be pointed out and filed right from the start. As a general rule, supplementing the initial pleading is not normally possible.
Only the owner of the registration or a recorded licensee has the legal standing necessary to sue the infringer.
While there are actions to fine a patent owner who asserts invalid/baseless claims repeatedly, no such provisions exist for trade mark claims. However, if a preliminary injunction is obtained and the plaintiff loses, they also lose the security they posted to guarantee the damages caused to the defendant. A civil action could be considered to recover damages, depending on the basis of the claim and other particularities against the plaintiff.
A recorded licensee or the owner of the registration are the only possible plaintiffs in most cases. The Mexican Institute of Industrial Property is also allowed to punish trade mark infringement ex officio, but this is uncommon.
Stopping infringement of an unregistered trade mark is almost impossible. The only instances where this could be feasible (and only through administrative actions) would be if the mark were to be considered well-known or famous in Mexico – but, even then, it would demand a considerable volume of evidence and expense.
The plaintiff would need to prove that the defendant is identifying products or services under the mark or a confusingly similar sign or that products originating from the defendant are in the market identified by the infringing mark, which must be similar to the ones covered by the plaintiff's registration.
In addition, it should be mentioned that it is the plaintiff who has both the burden of production and the burden of persuasion and that case law acknowledges the defendant should be presumed innocent.
These standards are much higher for criminal action and the public prosecutor will need to gather evidence of the crime to persuade the control judge to go further, before it even gets to a trial.
While the defence that the sign has already been used as a trade mark is sometimes attempted, it rarely succeeds unless the defendant files a counterclaim to cancel or annul the registration on the basis that it is descriptive.
Prior use in Mexico is a valid defence against infringement. If the defendant demonstrates that they have been using the mark in an uninterrupted manner preceding the filing date, priority date and claimed date of first use in Mexico, no infringement will be found, though this is difficult and may demand a large volume of evidence.
An exhaustion of rights is also a very common defence – for instance, in cases involving ink and water refilling services.
In addition, the defendant could try to attack the plaintiff’s legal standing by filing a counterclaim to have the registration eliminated.
'Own name defence' does not exist in Mexico.
Courts consider likelihood of confusion to be a strictly legal matter. Expert opinion is unlikely to be of use against a claim of infringement or a defence against it.
As previously described, administrative and criminal channels are the main ones which deal with such offences, at least initially; civil actions come later.
The customs office have a registry where trade mark-owners can inform them of the marks they have, who the authorised importers are and the details of the counsel for the trade mark-owner they should contact if they find counterfeit products.
If they do detect such products and inform the trade mark-owner, the owner must then attempt a preliminary injunction, administrative action or criminal action to have the product seized and stop it from entering Mexico.
There is cancellation due to lack of use which applies when a registered trade mark is not used for three consecutive years in at least one of the products or services the trade mark covers.
There is also a second form of cancellation due to tolerating that the trade mark has become a generic designation for the products and services in question.
Then there is annulment that can proceed for prior use in Mexico or abroad, the granting of the registration against the provisions of the law, the granting of registration against a prior mark that should have been cited, the granting of registration on the basis of false information contained in the application and the granting of registration in bad faith.
Revocation/cancellation actions are brought before the Mexican Institute of Industrial Property. The decisions can be challenged in the same way as a trade mark refusal, through the motion or appeal previously described.
For annulments on the basis of prior use, prior registration or false information, there is a five-year statute of limitations computed from the issuance and publishing of the registration.
Actions begin with the filing of a complaint by a party with legal standing, namely someone affected by the registration. Usually this means either an applicant who received a citation of the registration or a defendant who is being sued on the basis of the registrations.
Partial revocation/cancellation is not possible under Mexican law.
Amending the products or services covered by the registration, through limitations or specifications, is possible during the course of these proceedings and in general at any time before the registration is cancelled or annulled, although the usefulness of this will vary.
If actions involving revocation/cancellation and infringement are related to the same registrations then they are heard together. Usually the Mexican Institute of Industrial Property will first examine the challenges against the registration and then, once it has confirmed that it is/remains valid, it will decide the infringement claim. A single decision will be issued deciding both issues simultaneously.
The Industrial Property Law sets a basic framework involving the filing of a complaint and answer, both with their supporting evidence, followed by closing arguments before the decision is finally issued.
In addition, the Federal Law of Administrative Procedure and the Federal Code of Civil Procedure come into play for matters not indicated in the special rules of the Industrial Property Law.
The decision-maker is the Mexican Institute of Industrial Property or a judge. There are no juries in the Mexican legal system.
There are no formal mechanisms for settling a case in administrative proceedings, but if the parties so agree they can use mediation or arbitration – however, this is very uncommon. In criminal procedures, both public prosecutors and control judges often actively encourage the defendant to pay an indemnification and provide other compensation to settle the matter.
As stated above, challenges against the registration on which the infringement claim is based are solved in the same decision as the infringement claim. If the claim against the registration succeeds, then infringement is unlikely to be found.
In administrative and criminal procedures, the final outcome would be to punish the infringer and have him/her desist from the illegal conduct (which does include injunctive relief as previously described) rather than to award damages. However, in a subsequent civil trial, the plaintiff could use the resolution declaring the infringement to obtain damages for at least 40% of the sale price to the public of the infringing products or services.
If a preliminary injunction was obtained by the plaintiff and the plaintiff loses, the defendant is entitled to the security posted by the plaintiff. Then, in a civil trial, the defendant could recover damages caused by the plaintiff’s action, if any. A decision declaring no infringement was found would be issued.
The remedies are the same for all types of trade marks.
There are no special provisions concerning the appellate procedure for trade mark proceedings – they are standard for administrative, criminal and civil matters.
Both factual and legal findings can be reviewed de novo. However, the appeal stage is usually an inappropriate point to analyse evidence that the appellant had the ability to file in earlier stages.
In an administrative action, it takes around a year for an appeal. In criminal and civil actions, the procedures are more complex and so are the appeals, especially when procedural issues are raised that may merit a retrial. For these reason, such proceedings – while nominally taking a similar time – may in reality demand several appeals.
Dilution is not recognised as such, but a lack of distinctive character can be raised to argue that a trade mark registration should not have been granted through an annulment proceeding.
To protect such marks it is necessary to prove that they are well-known or famous in this jurisdiction, and in practice this is difficult. If proven then notoriety or fame can be used to annul trade mark registrations, refuse trade mark applications or even claim infringement in an administrative action.
Both denominations of origin and geographical indications can be protected and a certificate issued for their protection.
For rules with regard to certification marks, see above.
It is not permitted for an individual to use their own name to identify products or services if it provokes confusion with a prior mark.
The most substantial cost tends to be the preparation and gathering of evidence to prove the infringement.
For a procedure without a counterclaim, typical costs are around USD8,000-10,000 plus taxes, government fees and expenses. If a counterclaim is filed, additional costs of around USD7,000 – plus taxes, government fees and expenses – would apply for dealing with the counterclaim procedure.
The losing party is required to reimburse the prevailing party for attorneys' fees, but only if the winning party is willing to take them to a civil trial for that purpose.
For trade mark matters, ADR is very rare – the mutual mistrust of the parties usually means that they will not agree to submit to it. In the rare cases where it happens, there was usually a pre-existing agreement between the parties that set out the ADR mechanisms.
Certainly, trade mark rights and copyright are not mutually exclusive. The advantage a trade mark has in respect to a patent is that the protection can potentially last forever, and it would never go into the public domain unless the owner allows it.
It is also important to consider that the standards for a design patent refer to novelty, which does not necessarily mean 'distinctive'. It is not unusual, for example, for trade mark applicants to a three-dimensional mark (such as a bottle) to also file it at the same time as a design patent – yet, the trade mark registration may be refused, and the patent granted.