Source:www.wipo.int
“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
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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