MEXICO: AMENDMENTS TO THE INDUSTRIAL PROPERTY LAW

AMENDMENTS TO THE INDUSTRIAL PROPERTY LAW IN MEXICO

A substantial amendment to the Industrial Property Law in Mexico has come into effect on August 10, 2018, same which represents the most substantial changes to the Industrial Property system in Mexico in the last 25 years. In light of this, we want to let you know of the following important changes that have taken place

• NON TRADITIONAL TRADEMARKS 

The amended IP Law now incorporates protection for non-traditional marks (sound, smell, business image or trade dress) as well as the addition of the “secondary meaning” figure, for marks that on principle were not subject to registration given their descriptiveness, generic nature or lack of originality, but which acquire distinctiveness through the special use which their owners grant them in the market.

• COLLECTIVE TRADEMARKS

Certification marks have now been included in the collective marks chapter, highlighting their protection scope and regulation, as well as broadening the requirements which the use rules must contain for these types of marks.

• LEGENDS, DISCLAIMED ELEMENTS AND APPLICANT’S NATIONALITY

It will no longer be necessary to include the legends, disclaimed elements and applicant’s nationality in the application formats.

• SPECIFICATIONS OF THE PRODUCTS OR SERVICES

It will now be mandatory to “specifically” include the products or services to be protected by the mark, that is, general headings (“heading class”) from this date forward, will no longer be accepted as a sole description.

• BAD FAITH

Mark registration applied for in bad faith will be prohibited, that is, those marks seeking an undue advantage or benefit to the detriment of the legitimate owner of the mark.

• IMAGE OF A PERSON

Further protection is granted to the images of persons, by prohibiting the mark registrations of images, identifiable voices, portraits and signatures of the same, without their express consent, or having died, consent from those with the corresponding rights.

• LoC’s

Letters of Consent for the procurement of mark registrations will be regulated for the first time, i.e. those which previously were routinely filed in every day practice will now be recognized by the Law.

• CHANGES TO THE OPPOSITION SYSTEM

The Opposition Procedure chapter will be amended to now include an allegation period, thereby, forcing the Authority to issue a resolution in a founded and motivated opposition.

• USE OF A MARK “AS REGISTERED”

It requires marks to be used “as registered”, thereby eliminating the possibility of using them with modifications which do not alter their distinctive character.

• FAMOUS AND WELL KNOWN TRADEMARK

Within the chapter corresponding to Famous and Well Known Trademarks, in order to be able to apply that the same be declared or deemed as Famous or Well Known, it shall no longer be necessary to have a registration in Mexico covering the products or services in which the trademark acquired its fame. Regarding the grounds for the invalidation of the declaration of fame or well-known marks, those which referred to the false nature of the evidence used for the declaration and when it has been issued based on an incorrect analysis of the evidence, have been eliminated.

•  REAL AND EFFECTIVE USE OF A TRADEMARK REGISTRATION

Trademark owners will now be required to declare proper and effective use of their trademark three years after its granting, allowing a three-month period for doing so, which, if not met, the registration will then be considered as lapsed. This declaration of use is necessary only one single time, given that from then on, the obligation of declaring use will still be necessary, however, merely as part of the renewal procedure.

According to our sources, the new provision of establishing the filing of the Declaration of Use will apply only to trademark registrations granted as from August 10, 2018. However, it is possible that the implementing regulation may exempt from this obligation, those trademarks “filed before” August 10,2018.

The Declaration of Use must be filed within three months following the third anniversary of the trademark registration as counted from the date of grant.

It will not be necessary to submit proofs of use, but only a Declaration of Use.

• ADMINISTRATIVE DECLARATION PROCEDURES

In the area of Administrative Declaration Procedures, the changes brought on by the Amendments to the Law, include:

It introduces the grounds of invalidation for Registrations obtained by the agent, representative, user or distributor for the owner, or by any other person who had direct or indirect relation with the owner (article 151-V) as well as registrations obtained in bad faith (article 151-VI).

It furthermore introduces the following as an administrative infringement:

1. The use as a trademark of places’ names with particular properties when they are characterized by the production of certain products;
2. The use as a trademark of names, last names, appellatives, pseudonyms of people who have acquired prestige;
3. The use as a trademark of the names of literary or artistic works, their elements and characters;
4. The use as a trademark of signs susceptible to deceive or mislead;
5. The use as a trademark of denominations deemed as famous or well known