Trade Marks 2020

Last Updated February 26, 2020

Mexico

Law and Practice

Authors



Basham, Ringe y Correa S.C. draws upon over a century of experience assisting its clients in conducting business throughout Mexico and abroad. The firm’s clients include prominent international corporations, many of them on the Fortune 500 List, medium-sized companies, financial institutions and individuals. Basham's practice includes the protection of distinctive signs such as trade marks, commercial advertisements and trade names. The services provided by the firm go beyond the various processes necessary to obtain the registration, also providing sound creative advice and always looking to preserve its clients’ rights. Specific work in this area includes: drafting all types of agreements which involve distinctive signs, including franchise agreements; audits on intellectual property matters, in order to determine the viability of a merger or acquisition regarding a company’s intangible assets; and establishment of an international network of correspondents allows Basham to manage a company’s intangible assets, simplifying administrative procedures, mail and the invoicing of clients. The firm's broader intellectual property work involves considerable experience in terms of patents and copyrights, as well as expertise in adjacent sectors such as privacy and data protection, life sciences and franchising.

Mexico recognises several kinds of trade marks, all in statute. More specifically, Article 89 recognises that the following can constitute trade marks:

  • words, letters, numbers (word marks);
  • designs, figures and combinations of colours (design marks);
  • three-dimensional shapes, such as the form of the product or its packaging;
  • holograms;
  • sounds;
  • smells;
  • operational elements such as image elements, designs, colours, dispositions, labels, packaging, decorations, trade dresses, etc; and/or
  • any combination thereof.

While the official forms and certain requirements will vary in accordance with the kind of trade mark to be registered, it shall be mentioned that the registration process is essentially the same. Once an application to register is filed it will be published on the Industrial Property Gazette and enter a one-month opposition period, after which the examiner will have approximately six months to either issue formal or substantive objections or grant registration.

In addition, the law acknowledges that any of these can not only constitute regular trade marks, but also certification marks or collective trade marks, both of which are recognised in statute.

Moreover, any trade mark that is sufficiently known in the commercial circles or by consumers as a result of its use can potentially be recognised or declared to be well-known. A trade mark that is so known that the majority of consumers in Mexico will recognise it can be recognised or declared as famous. Again, this protection is statutory.

The general rule consecrated by Article 87 of the Industrial Property Law is that trade marks must be registered in order to have a right of exclusive use over them.

The use of unregistered trade marks can be raised to challenge the validity of third party trade mark registrations or as a defence against claims of trade mark infringement. However, use of an unregistered trade mark does not suffice to force a third party from using an identical or similar trade mark, that can normally only be attained through registration.

In addition, trade marks that are well-known or famous can be protected even if unregistered in certain ways. For instance, examiners can and have refused registration of trade marks that they consider to be identical or confusingly similar to well-known or famous trade marks, even if they are not registered in Mexico.

The standards for determining if a trade mark can be registered are essentially the same, regardless of the kind of trade mark. They must not fall within the prohibitions of Article 90 of the Industrial Property Law. These prohibitions essentially refer to the distinctive character of the trade mark, likelihood of confusion with other trade marks, possible deceptive character, bad faith and unfair competition and they apply to any trade mark regardless of the kind of mark.

In addition, as per Article 4 of the Industrial Property Law they must not run afoul of public order (ie, trade marks referencing criminal activities such as drug traffic), morals (trade marks containing insults or inciting discrimination) or other legal dispositions (health and labelling regulations pertaining to certain products). Again, these prohibitions typically apply to all trade marks.

A few exceptions exist in which the Industrial Property Law sets out specific prohibitions for certain kinds of marks. For the case of three-dimensional marks, the law provides a prohibition in that they cannot register if they are a shape of the product dictated by its nature or a shape of common use or in the public domain. Similarly, holograms that are in the public domain cannot be registered either. Certification marks cannot be registered by individuals or entities that provide the product to be certified.

Regardless, it shall be mentioned that the documentation and formal requirements will, of course vary in accordance with the kind of trade mark to be protected. For instance, to register a trade mark that includes a three-dimensional shape the applicant must provide several different views of the product so that the examiner can understand the overall shape. For sounds, a digital file containing the sound must be submitted, for olfactory marks submitting the product is necessary. In the case of certification marks and collective trade marks, rules detailing how the trade mark will be used must be submitted along with the application.

Demonstrating a secondary meaning or a distinctive character obtained through use is not necessary for any kind of mark in particular. However, if the applicant so wishes or if the examiner raises an objection based on the lack of distinctive character of the mark, for instance if the mark is descriptive, the law can allow a circumvention of the objection if the applicant provides enough evidence as to persuade the examiner that the mark has acquired a distinctive character through use.

Yes, the Mexican Institute of Industrial Property is tasked by the Industrial Property Law to register trademarks. The registry is public, and anyone can check on the files of trademark applications or registrations directly at their offices or online. Moreover, trade mark applications, registrations and certain actions pertaining to them such as the recording of licenses, assignments, renewals and cancellations are published in the Industrial Property Gazette which can be searched on the site.

There is one single register in Mexico for trade marks. However, in addition to trade marks, the law also permits the registration of slogans (phrases used to advertise products, services or establishments) and the publication of trade names (the name by which an establishment is known) and these rights can also be searched on the registry of the Mexican Institute of Industrial Property and on the Industrial Property Gazette.

Searches are very commonly performed to determine the availability for registration of a trade mark and are usually conducted before filing for registration. Since under most circumstances, unregistered trade marks are not relevant for registration, a search will typically only consider the trade marks on the registry and searching the sites indicated above (and sometimes the Madrid Monitor) is usually enough to determine if the mark can register.

Typically, any individual or entity can file for the registration of a trade mark. It does not matter if the entity is a company, a charitable foundation, a trust, a partnership, a government body, a political party, a church, etc, as long as it legally exists under the laws of its jurisdiction, it can register and own trade marks in Mexico. An exception to this rule applies to certification marks, which cannot be registered by those who are dedicated to supplying the products or services to be sold. A similar exception applies to certification marks which must be filed for by a duly constituted association of producers.

Article 113 of the Industrial Property Law sets forth the essential requirements for filing an application, which apply to all marks and which consist in providing the name and address of the applicant, the trade mark to be protected, its date of first use in Mexico (optional, Mexico does no demand use of a mark to obtain registration) and the specific products or services to be covered. In addition, if a priority is to be claimed, the applicant will need to indicate the country and date of filing of the foreign application. The regulations of the law indicate a few other requirements such as indicating the premises where the mark has been used if a date of use is claimed and the way in which the trade mark must be presented in the application (image sizes, representations of sounds, descriptions of smells, etc)

All trade mark applications must include payment of the applicable government fees. Applications can be filed electronically by anyone with a tax electronic signature or in paper.

Mexico does not allow multi-class applications. For designations made through the Madrid System, each class is assigned its own national application number and examined separately and, if granted, given its own registration number.

Once the application is filed, it will be published for opposition. The law provides such publication should be made within the next ten business days following the filing. Once the application is published, a term of one month will start running for oppositions to be filed. Unlike other countries, the filing of an opposition does not interrupt the examination process, nor does it bind the examiner, who still gets to decide the outcome of the case, regardless of any oppositions filed or the lack thereof.

If an opposition is filed, it will be published. The applicant has the right but not the obligation to answer the opposition within a term of one-month counted from the publishing. If the opposition is answered, both parties will then be given a two-day term to submit closing arguments, if so they wish.

With or without oppositions and replies thereof, the examiner will have approximately four months from the filing to issue any formal objections and up to six months from the filing to issue substantial objections. As per the internal regulations of the Mexican I.

The law does not provide for the registration or series marks, nor do the official forms allow it. Nevertheless, given that the law allows for the protection of holograms as trade marks and that the law does not expressly forbid series marks, it is hypothetically possible to protect them in some instances as holographic marks.

The prohibitions for registration are included in Articles 4 and 90 of the Industrial Property Law, they can be summed up as follows:

  • Trade marks that are contrary to public order, good customs and morality. Typically, this prohibition is usually applied to trademarks that consist of insults, promotion of illicit activities (ie, slang words for illegal drugs, nicknames of well-known drug dealers), etc. While inherently subjective, these concepts are usually interpreted by the courts in reference to “the core of basic and fundamental convictions as to right and wrong” in society and are understood as necessary for peaceful coexistence.
  • Trade marks that are not distinctive, including generic terms, descriptive trademarks, three-dimensional shapes and holograms that are in the public domain, isolated letters, digits or colours. For such marks, it shall be mentioned that the law recognises that a distinctive character can be acquired through use. It shall be mentioned that composite trade marks should be inherently distinctive in all their elements to avoid this prohibition, for instance a composite trade mark consisting of the three-dimensional shape of a bottle, the design elements featured on the bottle and a word present on it, should be distinctive in all three elements.
  • Deceptive trade marks, including trade marks that include false indications as to the nature, components, quality or company origin of the products to be protected. It is also forbidden to register marks that include or imitate geographical indications, maps, appellations of origin and other signs that may falsely indicate the geographic origin of a product or service or marks that reference animal races and plant varieties if they may provoke confusion. For these prohibitions to apply, examiners and courts usually look to the nature of the products or services, the possibility of confusing consumers and the possibility of unfair competition, on the understanding that a trade mark that might be deceptive for certain products is not necessarily deceptive for others. In respect to trade marks that may mislead as to the geographical origin, the law expressly indicates that using terms such as “produced in”, “imitation of”, etc, is also forbidden.
  • Trade marks that reproduce or imitate coats of arms, flags or emblems of any country or its political divisions, as well as the names, abbreviations, emblems or any other symbol of international treaties, government organisations, any officially recognised organisation, coinage, bills, official means of payment, official seals or control or warranty signs adopted by any state. These prohibitions will not apply if proper authorisation is shown. While other countries may allow the reproduction of their flags and other emblems associated with the country or its government, Mexico is very strict and will often refuse registration to trade marks that include flags if no authorisation is shown, even if the use of the flag would be perfectly permissible under the laws of the respective foreign jurisdiction (ie, under the first amendment of the United States’ constitution). Yet, in some instances where a trade mark contains a minor element which looks like a flag or national emblem but also contains other relevant words, examiners can be less strict. For example, there are marks that include elements that resemble the flag of the United Kingdom and also include other elements registered in class 25
  • Trade marks that without authorisation reproduce the names, pseudonyms, last names or otherwise reference persons that are known enough so that the mark may provoke confusion. This prohibition seeks to block the registration of trade marks that seek to unfairly capitalise on the reputation, fame or prestige of a particular person. It will be typically be applied in instances where the trade mark contains the name of a celebrity such as movie star or a well-known designer, author, sports player, etc. However, this prohibition will not apply in instances were authorisation from the celebrity can be provided or at least inferred. For instance, if a written consent from the celebrity is submitted or if it can be shown that the celebrity is a shareholder of the applicant or is otherwise involved with applicant in the exploitation of the trade mark the prohibition can be overcome.
  • Trade marks that without authorisation reproduce the identifiable voice, signature, portrait or image of individuals. This prohibition will not apply if consent is shown. Unlike other countries, in Mexico this prohibition will apply even if the individual is deceased and in such scenario consent must be sought from the heirs of the deceased individual. It shall be mentioned that under the Mexican Copyright Law, the image of an individual cannot be used without consent during the individual’s life and for 50 years after death, with exceptions such as payment in exchange for taking the image and legitimate journalistic purposes.
  • Trade marks that reproduce the names of places of places of private property that are identifiable and known for the production of products or services, without the consent from the owner.
  • The titles or contents of copyrighted works, when they are so known that there is a risk consumers could believe there is an association with the work. The same prohibition applies to the registration of trade marks that reproduce or imitate characters. These prohibitions do not apply when the applicant has the authorisation from the copyright holder. The prohibition will only apply when the work or character is sufficiently known so that consumers could mistakenly associate the product or service identified by the mark with the work or character, thus, works and characters that are not sufficiently known in Mexico would not be subject to the prohibition. Typically examiners will refuse registration on this basis to the titles of well-known books, films, television series, etc. As in the fifth bullet point, authorisation from the copyright holder should be provided or at least inferred in order to overcome the prohibition.
  • Trade marks filed in bad faith, understood amongst other cases as filed against good customs and practices or with the purpose of obtaining an improper advantage in detriment of the rightful owner of the trade mark. Typically, bad faith can be shown if the applicant is clearly trying to register a trade mark that is known and popular in Mexico and clearly owned by a third party as evidenced, for example, through the presence of the mark in the news, social media following, sales and advertising in Mexico, registrations in other jurisdictions, etc. Bad faith can also be often shown by applicant’s history of trying to register the trade marks of others.
  • Trade marks that are non-registrable through other hypothesis of the law, even if translated into other languages, transliterated or misspelled. For instance, the prohibitions on descriptive trade marks will apply even if the trade mark is in languages other than Spanish.
  • Trade marks that run afoul of any other legal prohibition, even if not contained in the Industrial Property Law. Though uncommon, laws and regulations in respect to certain subjects such as consumer protection, alcoholic beverages, tobacco, medicines, etc, may bar the registration of certain marks that would otherwise be registrable, even if those laws and regulations do not specifically refer to trade mark law.

The law foresees that the if the examiner objects to registration, regardless of the basis for the objection, a communication of the objection should be given to the applicant, typically through the Industrial Property Gazette. The applicant will then have a term of approximately four months to submit a reply in writing to the objection, submit any supporting documentation and in general, submit any petition, argument or document that may help his case.

Typically, for most objections the applicant would argue that the mark does not fall within the prohibition, ie, that it is not descriptive, deceptive, etc. Though in the case of trade marks that are being objected on the basis that are not distinctive, the applicant could certainly try to argue that the mark has acquired a distinctive character and submit evidence to support the claim.

The examiner is constrained to search for prior marks, whether they are pending applications or registered marks. The examiner can also consider trade marks that are either well-known or famous in Mexico, even if unregistered. As indicated above, in some circumstances copyrighted works, characters and even the name and image of individuals are also potential obstacles.

After an application is filed but before it is examined it will be published in the Industrial Property Gazette. Anyone interested in doing so can then submit an opposition within a term of one month. The prospective opponent does not need to have a prior trade mark or any kind standing or commercial interest, just to submit the opposition in time and with the payment receipt for the applicable government fees.

The description of products or services can be delimited or specified at any time during the application process, but new products or services cannot be included in the description. Similarly, errors in the class and clerical mistakes can usually be corrected so as long as registration has not yet been issued or refused.

However, the applicant cannot modify the trade mark submitted.

This is perfectly possible, but it is important to consider that enforceable exclusivity over the mark will not exist until the application obtains registration. Therefore, an assignee or licensee will not be able to stop third parties from using identical or confusingly similar trade marks until the application registers.

In principle, there are two remedies that are not mutually exclusive. The first remedy is that the applicant can file a motion for review, which is essentially a brief to request that the hierarchical superior of the examiner review the case and revoke the refusal. The hierarchical superior will then normally take around six months to review the case and issue his decision. This remedy is optional in that the applicant can freely choose to attempt it or not and it does not prejudice the applicant’s ability to file an appeal (as described in the next paragraph) if the outcome of the motion is not favourable.

The other remedy is an appeal with the Federal Court of Administrative Justice. Matters concerning intellectual property are usually solved by a specialised chamber of the court comprised of three judges who only solve IP matters. The appeal is initiated by the filing of the complaint, with such complaint, the judges will give notice to the Mexican Institute of Industrial Property and provide a deadline of roughly a month to reply to the complaint and send over the official file of the trademark application. If registration was refused on the basis of a third-party application or registration, the owner of such application or registration will be informed and allowed to reply to the complaint as well. Once the complaint is answered and the official file submitted, typically all parties will be allowed to submit closing arguments and then the judge in charge of the case will start drafting the decision, which will be voted by all three judges of the chamber and if approved by a plain majority will become the final decision of the case.

The decision issued by the Federal Court of Administrative Justice can be challenged in the Federal Circuit Courts through an “amparo directo”, essentially a constitutional review of the decision.

The applicant does not need to show any use of the mark to obtain registration. However, once the mark is registered, the applicant must begin to use it no later than three years after obtaining registration.

Dividing a trade mark application is not possible in Mexico.

The term of protection is ten years after the filing date of the application. The renewal can be requested six months before the renewal date and there is a six-month grace period available after that.

A trade mark registration will have no effect against anyone selling, distributing, buying, importing or using a trade marked product once it is lawfully entered into commerce. This applies to “grey market” imports lawfully purchased in other countries.

Mexico does participate in the Madrid System and there are three relevant aspects that must be considered:

  • Because Mexico is a single-class system and does not allow multi-class national applications, upon receipt of designation, Mexico will essentially “brake up” any designation it received and prosecute each class separately.
  • Mexico does not recognise trade mark licenses filed with WIPO. Any license recording needs to be made directly in Mexico.
  • The renewal of international registrations will not have effect in Mexico unless the owner also files in Mexico a statement declaring under oath that the mark has been used.

Typically, evident clerical errors in the application form such as spelling mistakes, errors in numbers, domiciles, etc, can often be corrected during the application process directly with the examiner. There are, however, two more complex issues:

  • the description of goods or services initially filed for can never be expanded to include goods or services not mentioned in the original filing; and
  • the trade mark itself cannot be altered after the initial application is filed.

In addition, incorrect information included in the application form that is not corrected may result in the annulment of the corresponding trade mark registration on the basis of false information.

The law provides that in principle trade marks should be used “as registered” through alterations that do not alter the distinctive character of the mark are permitted. Whether an alteration alters or not the distinctive character of the mark is something that is determined on a case-by-case basis.

It shall be mentioned that a registration can be cancelled for lack of use if the mark is used with modifications that do alter the distinctive character of the mark. For this reason, in close cases it is better to obtain a registration for the new version of the mark as opposed to risking an existing registration

Including the expression “marca registrada”, the letters “MR” the symbol ® or some other expression denoting that the trade mark is registered can be very useful in the event of an infringement. A registered trade mark owner that can show that the mark is used in this way can obtain a preliminary injunction to cease the infringing conduct while the litigation is ongoing, can initiate criminal proceedings in some cases and may obtain an award for damages if infringement is found.

In Mexico, rights are only acquired through registration and there are no common law rights. Thus, the letters “TM” have no effect.

A pending trad emark application or a trade mark registration can be assigned in any way permitted by the laws of the place where the assignment takes place. In this regard Mexico follows the locus regit actum principle and an assignment will have effects between the parties in the instant that a contract is formed between the parties as per the laws of the jurisdiction where the assignment takes place. However, an assignment agreement must be recorded with the Mexican Institute of Industrial Property in order to have effect against third parties.

For recording purposes, the assignment agreement must be in writing, but no notarisations, legalisations or apostilles are required. The assignment agreement should clearly identify the parties and the registrations or applications that are being assigned.

When recording an assignment, it is very important to understand, that there can be no unrecorded changes in title. For example, if A assigns their trade mark registration to B and B then assigns it to C without recording the change first, C will need to record both the change from A to B and from B to C.

The assignment agreement just needs to be filed along with a form and then in approximately six months’ time an office action will be issued confirming the recording of the new ownership.

An assignment is valid between the parties from the moment a contract is formed under the laws of the place where the assignment takes place.

However, recording the assignment is indispensable for the assignment to have effect against third parties such as creditors and infringers. Similarly, if a third party challenges the validity of the registration, it is the recorded owner who will have to defend it. Moreover, creditors such as banks or the tax authorities could try to seize the registration to obtain payment from the prior owner until the new ownership is recorded.

A trade mark can be given as security, be subject to rights in rem, assigned by way of security or be levied in execution. However, the respective agreement/court order would need to be recorded so that it will have effects against other creditors.

A license must be in writing and point out the parties and applications/registrations subject to the license in order to be recorded and have effects against third parties such as creditors and infringers.

However, in some circumstances, namely if the license is provided along with a certain degree of know-how, then the law would not treat the agreement as a license but as a franchise, which may impose additional requirements.

The process for recording a license is very simple, the agreement and certain forms must be filed and then in roughly six months an office action confirming the recording will be issued.

It is not mandatory, but it can be helpful because it means the license will have effects against third parties. For example, if the licensor defaults on their taxes and the government seizes the registration, they will not be able to keep the licensee from continuing to use the mark under the license.

There is no reason a perpetual licence may not be granted, but licensor may want to make sure there are ways to effectively terminate the license in the event that the licensee defaults on his obligations.

There are no further requirements besides those already indicated.

An opposition must forcibly be filed within a term of one month from the publishing of the application in the Industrial Property Gazette. A peculiarity of Mexico’s opposition system is that applications are published before they come into being. The opposition can be based on any of the aforementioned prohibitions to register a trade mark and the opponent, therefore, does not need to base the opposition on a prior trade mark.

Anyone with interest in opposing the application may do so, with no particular form of legal standing is required. No attorney is necessary, though it may be advisable to have one. The official government fees are of around USD290. Typical attorney costs will range between USD600-USD1000, depending on the complexity of the opposition.

Once the opposition is filed, it will be published on the Industrial Property Gazette and then the applicant will have one month to reply. If a reply is submitted both parties will then be able to file closing arguments within a two-day term. The opponent will be informed if the registration is granted by the examiner. There is no discovery or hearings and the opponent and applicant must submit any documentation supporting their claims in the opposition and the reply.

The opponent cannot challenge the outcome of the application process itself. However, the law allows the opponent to attempt the annulment proceeding against the registration, as detailed below.

In principle, the owner of a registered trade mark can initiate an infringement proceeding before the Mexican Institute of Industrial Property.

In addition, forging registered trade marks with knowledge and for commercial gain, knowingly providing materials for the forgery, knowingly producing, importing, transporting, storing, distributing or selling products that bear forged registered trade marks for commercial gain are federal crimes.

These remedies are only available for registered marks.

Typically, infringement actions will be initially submitted with the Mexican Institute of Industrial Property through its division for protection of intellectual property. Criminal complaints on the other hand are filed with a federal public prosecutor of the attorney general’s office, normally through its division on intellectual property crimes.

If infringement is found, the Mexican Institute of Industrial Property will impose considerable fines on the infringer. Payment of fines can be forced by tax authorities, who may even seize and liquidate the infringer’s assets to obtain it. Additionally, the decision of the case will also contain an order to immediately and permanently desist from the infringing conduct under threat of additional fines for each day that the infringement persists.

The alleged infringer may not start declartory judgement proceedings, but the infringer can seek the cancellation or annulment of a registration as a counterclaim against an infringement action.

In a trade mark infringement action, the Mexican Trademark Office and in appeal the Federal Court of Administrative Justice and the Federal Circuit Courts.

In criminal matters, there would be a control judge during the preliminary/investigative stages and a federal criminal judge in the criminal trial. The appeal stage would be initially taken to a single criminal appeal judge and then to the Federal Circuit Courts.

For obtaining an award for damages through a civil proceeding, a federal district judge would handle the initial civil proceeding, then an appeal judge and then a Federal Circuit Court.

To initiate a trade mark infringement proceeding before the Mexican Institute of Industrial Property there are no prerequisites. However, to obtain a preliminary injunction, to file a criminal complaint and to obtain an award for damages in a civil proceeding the plaintiff must show that the trade mark has been used with the expression “marca registrada”, the initials “MR” or the symbol ® or that plaintiff has otherwise informed the public that the trade mark is registered.

In a trade mark infringement action or in a civil proceeding to award damages, parties do not need to be represented by a lawyer. However, in a criminal proceeding the defendant will always be represented by a lawyer.

Interim and preliminary injunctions are avaliable and used to obtain it is necessary to use the aforementioned legends to show that the mark is registered. Moreover, the plaintiff will have to post a bond to guarantee the damages caused to the defendant if no infringement is ultimately found.

Typically, a defendant can obtain relief from a preliminary injunction if they post a bond to guarantee the damages caused to the plaintiff if infringement is found. A bond will have to be for an amount of at least the amount posted by the plaintiff to obtain the preliminary injunction plus an additional 40%.

Both the plaintiff and the defendant are allowed to request the following when they file their complaint or reply:

  • a request for the Mexican Institute of Industrial Property to conduct an inspection at certain premises to look for a potential infringement. In this way an inspector from the Mexican Trademark Office will show up with an order to inspect the premises. Failure to allow the inspector to proceed will be construed as proof of infringement and result in the imposition of fines against the owner or possessor of the premises; and/or
  • a request for the Mexican Institute of Industrial Property to order the answering of questions or the submission of documents. For example, the Mexican Institute of Industrial Property may request information and invoices regarding certain products. Failure to comply will result in fines.

When the complaint is filed by the plaintiff or answered by the defendant, they can use these mechanisms to obtain information and evidence from the other party and/or third parties.

Under Article 189 of the Industrial Property Law, the complaint must at least contain the following:

  • name and domicile of the plaintiff;
  • name and domicile of the defendant;
  • the relief sought, detailing in clear and precise terms exactly what the plaintiff seeks;
  • a description of the facts; and
  • the legal basis.

In addition, the plaintiff will have to submit and offer the evidence supporting the claim.

Representative or collective actions are not permitted. While Mexico does have collective actions, these are allowed only for defending either collective and diffuse rights and interests or individual rights and interests with a collective incidence, neither of which would normally include the rights granted by a trade mark registration.

While there are no specific provisions that would keep a trade mark owner from asserting rights, it shall be mentioned that false statements made to the Mexican Institute of Industrial Property, the Federal Public Prosecutor or a judge can constitute crimes. Moreover, bonds posted in a preliminary injunction can be lost if the party who posted the bond loses the case.

The only necessary parties would be the owner of the registered trade mark and the infringer. A third party with a recorded licence can initiate a trade mark infringement action unless the agreement has an express provision to the contrary. An unregistered trade mark cannot be subject to an infringement proceeding.

The authority must consider the degree of similarity between the marks and find them to be identical or confusingly similar. This is done from a phonetic, ideological and visual perspective with a finding of likelihood of confusion in any of such perspectives being sufficient. Of course, the use of the infringing mark must have been made in products that are identical or similar to those covered by the registration.

A presumption of innocence applies in the defendant’s favour and thus the authority must determine if there is enough evidence from the plaintiff to conclude that the defendant made use of the allegedly infringing mark and then the authority must conclude that the defendant failed to provide enough evidence to support an alternate hypothesis of innocence.

Use of a trade mark in Mexico means that the products or services are identified by the trade mark and available in the market. Therefore, merely describing the characteristics of a product, especially a product clearly identified by a non-infringing trade mark is unlikely to constitute infringement.

In addition to denying the infringing conduct and proving an alternate hypothesis supporting defendant’s innocence, a defendant can raise the following defences:

  • Prior use: Prior and uninterrupted use of a trade mark in Mexico is a defence against infringement. Use must have comprised products identical or similar to those covered by the infringed registration and must precede the filing date, priority date and claimed date of first use of such registration.
  • Exhaustion of rights: If the defendant can show that the allegedly infringing products are authentic and that they were lawfully put in commerce, for instance by purchasing them from the owner of the mark and then importing them into Mexico, then the plaintiff’s rights would be exhausted.
  • Res judicata: If defendant has already been found innocent of committing the infringing conduct in a final and conclusive decision, then plaintiff’s claim should fail.
  • Comparison: The objective and lawful comparison of products and services as per the Federal Consumer Protection Law is permitted and does not constitute trade mark infringement.

It shall be mentioned that in Mexico, the “own name” defence does not work and neither individuals nor companies are entitled to use their names as trade marks where such use would infringe upon a trade mark registration.

The comparison of trade marks is understood as a question of law and thus expert testimony on the matter is irrelevant and often inadmissible.

Trade mark infringement can consititute an administrative or otherwise be enforced through administrative criminal channels. Certain conducts regarding the forgery of trademarks can be constitute federal crimes. The trade mark owner could file a criminal complaint with a federal public prosecutor of the Attorney General’s office, which has a division that specialises on intellectual property crimes. This would start an investigative stage in which the public prosecutor and the trade mark owner would gather and exchange information and evidence to show that the crime was committed, and that the defendant is probably responsible for it. If there is enough evidence and having previously taken a statement from the defendant, the public prosecutor may then decide to bring a criminal action. If so, a pre-trial stage will begin before a control judge to determine the contested facts and the evidence that will be subject to the trial before a criminal judge.

For counterfeits, seizures are possible, but not for parallel imports. Because Mexico considers that rights are exhausted upon the lawful sale of the authentic product bearing the mark, its import into Mexico does not constitute infringement.

Customs authorities may detect on their own potentially infringing products in which case they will try to contact trade mark owners to inform them so that they may verify if the product is authentic and if not, so that they may commence infringement or criminal proceedings. In addition, customs authorities have created a database in which trade mark owners may include their marks, their authorised importers and other information to help them detect counterfeit products.

Under Article 151 of the Industrial Property Law, a trade mark registration will be declared null if:

  • registration was granted against the provisions of the law;
  • rrior and uninterrupted use of an identical or confusingly similar trademark, made in Mexico or other countries and for the same or similar goods or services is demonstrated;
  • registration was granted on the basis of false information contained in the application form;
  • registration was granted by error or differences in criteria, when it should have been refused given the existence of a confusingly similar or identical registered trade mark;
  • registration was made by the agent of a foreign trade mark owner, for the foreign trade mark and without knowledge of the rightful foreign owner; and/or
  • registration was obtained in bad faith.

Article 152 foresees the cancellation of a registered trade mark due to lack of use, which shall be declared if no use was made during the three years immediately preceding the filing of the cancellation action for at least one of the goods or services covered by the registration.

Article 153 foresees that a registration will be cancelled if it is proven that the owner has caused or permitted the trade mark to become generic and as a result it has lost its distinctive character.

These would be solved by the Mexican Institute of Industrial Property. In appeal the Federal Court of Administrative Justice and the Federal Circuit Courts would intervene.

As mentioned in 6.1 Remedies and Reasons for Revocation/Cancellation, the current statute of limitations is of five years, counted from the publishing of the trade mark registration in the Industrial Property Gazette. For Article 152 cancellations based on lack of use, at least three years must have elapsed since the issuance of registration. In other cases, there is no limitation.

Anyone with legal standing, understood as anyone whose rights are directly affected by the trade mark registration, including but not limited to:

  • anyone who was received a citation of the registration against a pending application;
  • any potential infringer against whom the registration is being enforced and who submits a timely counterclaim with the reply to the infringement action complaint; and/or
  • anyone who owns a prior registration, which he considers having been affected by an erroneous granting of registration, if the claim is based on a prior registration as per Article 151 of the Industrial Property Law.

In addition, the Mexican Institute of Industrial Property can ex officio initiate these proceedings, though this is very uncommon

This is not currently applicable in our jurisdiction.

The trade mark owner may at any time delimit the products or services covered by their registration. Sometimes, as a strategy to avoid conflict, the owner of the registration may seek to limit the products or services it covers.

If the defendant in an infringement action filed a counterclaim to obtain the annulment or cancellation of the allegedly infringed registration, both cases will follow their own procedure and then will be solved at the same time through a single decision. Typically, the defendant will escape liability if the counterclaim succeeds.

For proceedings regarding the infringement, cancellation or annulment of trade mark registrations, there are special provisions in the Industrial Property Law which are supplemented by those of the Federal Administrative Procedure Law and the Federal Code of Civil Procedure, which can be summed up as follows:

  • once the complaint is submitted the defendant will be served with process and be given a term of one month from notice to reply and, if they wish, submit a counterclaim;
  • once the reply is submitted, the plaintiff will have three days to submit additional arguments and evidence against the defences and evidence raised in the reply;
  • if there is evidence that needs to be carried out such as requesting information and documents from third parties, any necessary actions will be undertaken by the authority and both parties will be given three days to submit arguments in respect to such evidence; and
  • once there are no further actions needed to solve the case, both parties will be given ten days to submit closing arguments and then the decision of the case will be issued.

For trade mark infringement procedures, if an inspection of the defendant’s premises and/or a preliminary injunction was requested in the complaint, then the authority will first carry out those actions and then give notice of the complaint. In infringement cases, the defendant has only ten days to submit a reply to the complaint as opposed to the usual one month indicated in letter a above.

Initially, cases are determined by an office of the Mexican Institute of Industrial Property, typically a subdirector from the Division for the Protection of Intellectual Property. In appeal the case would be decided by the three judges from a chamber specialised on intellectual property cases from the Federal Court of Administrative Justice and then by three judges from a Federal Circuit Court.

The parties can settle any time before the decision of the case is issued by the Mexican Institute of Industrial Property. Once a decision is issued, it is binding and the parties cannot convene against it. If the parties so wish, they can ask the Mexican Institute of Industrial Property to help conciliate between them, but this is very uncommon.

If the defendant challenges the registration on which a plaintiff bases their claim through a counterclaim, the counterclaim and the main proceeding will be normally solved at the same time. If, in another proceeding, the validity of the registration has been called into question, the authority will often wait for the resolution of that case to be issued.

In the proceedings before the Mexican Institute of Industrial Property damages are not awarded. Instead once such authority issues its decision in an infringement case, the plaintiff may initiate a separate civil proceeding to obtain damages. Still, a resolution from the Mexican Institute of Industrial Property finding infringement will always contain a fine and an injunction ordering that defendant cease the infringing activity under threat of additional fines.

If damages are sought in a civil proceeding, they will be of at least 40% of the sales price of every infringing product or service sold. However, this does not relieve the plaintiff of the burden of proving that damages did in fact occur as a consequence of the infringement.

Typically, there are no rights/remedies available to the prevailing defendant, but if plaintiff posted a bond to obtain a preliminary injunction, the defendant would be entitled to it.

The remedies are the same regardless of the type of trade mark.

While there are no defined special provisions, appeals do have a specialised chamber for intellectual property matters comprised of three judges of the Federal Court of Administrative Justice.

The factual findings of the Mexican Institute of Industrial Property are presumed to be true and accurate in most cases. However, the party appealing the decision is allowed to submit evidence against them and challenge them. This with the limitation that you cannot submit in appeal evidence that you had the opportunity to submit before the Mexican Institute of Industrial Property.

Similarly, questions of law are presumed to be correct, but the party appealing the decision can challenge them.

At the Federal Court of Administrative Justice, the time frame is typically a year to a year and a half, though this can depend on the complexity of the case. At the Federal Circuit Courts, this is extended by an additional year.

Dilution is more often invoked to obtain registration of trade marks and defend oneself against trade mark infringement actions.

Famous marks are protected provided they are well-known or famous in Mexico (even if unused or unregistered).

Mexican law recognises both geographical indications and denominations of origin and has a special process for protecting them. This protection can be sought even for foreign geographical indications and denominations of origin. Once protected through this procedure, the use of the geographical indication or denomination of origin requires authorisation from the Mexican government.

Essentially, registration cannot be sought by individuals or by entities who have commercial activities consisting in selling the products or services to be certified. During the application process it is necessary to provide the technical specifications to be certified, the methods for determining compliance, the sanctions for non-compliance. While certification marks can be used to certify any characteristic of the products or services, including geographical origin, it shall be mentioned that certifying a geographical origin will not absolve users of a protected geographical indication or denomination of origin from obtaining authorisation from the Mexican government.

The rule in our law is that you cannot use your name as a trade mark if it infringes upon a prior trade mark. This applies for both individuals or entities.

A cease-and-desist letter will typically demand costs of less than USD1000. Gathering evidence, however may prove more expensive as it may involve buying samples of infringing products, hiring notaries, etc, which may imply costs of a few thousand dollars. Moreover, evidence filed in foreign languages will need to be submitted with a translation into Spanish, which may demand additional expenses.

Typical costs are USD10,000-USD12,000, though the total cost will also depend on whether preliminary measures are sought and the resistance from the defendant.

Before the Mexican Institute for Industrial Property or in a criminal proceeding, each party bears their own expenses, but before a civil action to obtain an award for damages, the losing party may be forced to pay legal expenses to the prevailing party unless the lack of settlement is not its fault.

It is rather uncommon, but the law expressly authorises arbitration over damages for trade mark infringement and even allows the Mexican Institute of Industrial Property to act as an arbiter in such cases whenever the parties so wish. In addition, the parties may try to conciliate or even ask the Mexican Institute of Industrial Property to conciliate between them, but again this is uncommon.

Intellectual property rights in Mexico are not mutually exclusive. If a trade mark meets the originality requirement it can be protected through copyright as drawing for example. Moreover, the product that bears the trade mark might be original enough to be protected as a work of applied art. For instance, in the case of unique jewellry pieces bearing an engraving with a trade mark, this has been done recently.

In Mexico, industrial designs are protected as well and if a trade mark meets the novelty requirement (independent creation and differing significantly of known designs or their combinations) it may very well be protected through an industrial design. Still, unlike the protection of a trade mark registration which can be renewed an indefinite number of times, an industrial design registration is limited in its term of protection to up to 25 years from filing and thus, the usefulness of such registration would be debatable.

Basham, Ringe y Correa S.C.

Paseo de los Tamarindos No. 400-A,
Floor 9, Col. Bosques de las Lomas 05120
Mexico City

+52 55 5261 0600

+52 55 5261 0411

mbusto@basham.com.mx www.basham.com.mx
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Law and Practice

Authors



Basham, Ringe y Correa S.C. draws upon over a century of experience assisting its clients in conducting business throughout Mexico and abroad. The firm’s clients include prominent international corporations, many of them on the Fortune 500 List, medium-sized companies, financial institutions and individuals. Basham's practice includes the protection of distinctive signs such as trade marks, commercial advertisements and trade names. The services provided by the firm go beyond the various processes necessary to obtain the registration, also providing sound creative advice and always looking to preserve its clients’ rights. Specific work in this area includes: drafting all types of agreements which involve distinctive signs, including franchise agreements; audits on intellectual property matters, in order to determine the viability of a merger or acquisition regarding a company’s intangible assets; and establishment of an international network of correspondents allows Basham to manage a company’s intangible assets, simplifying administrative procedures, mail and the invoicing of clients. The firm's broader intellectual property work involves considerable experience in terms of patents and copyrights, as well as expertise in adjacent sectors such as privacy and data protection, life sciences and franchising.

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