Tuesday 17 July 2018

Mexico: Amendments the Industrial Property Law


Amendments to the Mexican Industrial Property Law (hereinafter referred to as 
“Mexican IP Law”) were published in the Federal Official Gazette on May 18, 2018 and will enter into force after 60 working days of its publication in the Gazette i.e. August 10, 2018. The main purpose of these alterations and amendments to the Mexican Industrial Property Law is to include protection of non-traditional trademarks and make some clarifications regarding various legal provisions that caused some interpretation issues in the past.
The amendments in the Mexican IP Law are as follows:
·         Non- Traditional Trademarks
Article 89 of Mexican IP Law now includes the possibility to protect non-traditional marks namely:
Ø  Holographic signs
Ø  Sounds
Ø  Smells

·         Trade Dress
Plurality of operative elements; elements of image, including, among others, the size, design, color, shape, label, packaging, decoration or any other that, when combined, distinguish products or services in the market.
Descriptive marks and non-distinctive trade dress will be registrable upon a showing of acquired distinctiveness.
·         Secondary Meaning
Trademarks that have acquired distinctiveness derived from their use may be registered, such as marks that would otherwise be refused on the basis of being descriptive.
·         Bad Faith
The amendment introduces bad faith as an impediment for the registration of a trademark. Bad faith is defined as: when the registration is requested against the good practices, uses or customs of the Industrial Property System, commerce and industry, or when an improper benefit or advantage is sought.
Bad faith is introduced as a ground for the nullity of a trademark registration. Such action may be exercised at any time.

·         Co-Existence Agreements
Letter of Consent and Co-existence Agreements will now be officially accepted by Mexican Institute of Industrial Property to allow registration of a trademark
·         Declaration of Use
An important amendment has been made to Article 128 of Mexican IP Law. It introduces the obligation to file a Declaration of Use (declaring the actual and effective use of the mark) by the owner of a registered trademark, within 3 months after the three years of registration. If such declaration is not filed, the trademark will lapse.
·         Opposition System
The trademark applications filed are published in an Official Gazette and any person or company that deem that the published trademark application is identical or similar to a previously applied for or registered mark, may oppose its registration within a term of one month counted as from the date of the respective publication. The applicant will then have a term of one month to submit its arguments against the opposition. The examiner will be compelled to take into account an opposition. Evidence may be submitted and subsequently arguments may be filed, within a period of 2 working days. However, the opposition procedure will not suspend the application procedure, nor determine the outcome of the substantive examination.
·         Certification Trademarks
The amendment to Mexican IP Law now includes protection for the Certification Marks, by which the owner is compelled to license use of the mark to anyone whose goods or services meet the standards established for certification.
Article 98 defines a certification mark as a sign that distinguishes products and services whose qualities or other characteristics (components, processing conditions, quality, processes, geographical origin) have been certified by their owner, such as:
·         Well-Known and Famous Trademarks
The declaration of notoriety or fame of a trademark may be requested without it being previously registered.
·         Nullity of Trademark Based on Prior-Use
The decree of limitations to file a trademark nullity action based on prior use in Mexico or abroad has changed from three years to five years.

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