Non-traditional trademarks and other amendments to the Mexican IP Law (First Part)

The Mexican Industrial Property Law was significantly modified last year through two batches of amendments. The first batch modified provisions regarding patents, designs, utility models, trademarks and appellations of origin (AOs). Geographical indications (GIs) are also now regulated under the Mexican IP Law and a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property (IMPI) will be created. Read this Kat’s review on the first batch here.

Let’s dive into the amendments to Mexican IP Law!

The second batch of amendments to the Law entered into force on 10 August 2018 and thoroughly modified some provisions related to trademarks and administrative procedures.

This Kat summarizes in two posts the second batch of amendments.

Office actions deadlines for patents and trademark applications

Applicants have a two-month term to file a response to an office action issued during the formal and/or substantive examination of a patent or trademark application. Such deadline may be extended for an additional period of two months which, according to the amended articles 58 and 122 BIS, “… shall be counted from the business day following the expiration of the term of [the first] two months”. 

Trademarks
Title IV of the Mexican IP Law was thoroughly amended to regulate inter alia the registration of non-traditional trademarks, certification marks, the distinctiveness acquired by secondary meaning, co-existence agreements and letters of consent, grounds for refusal of registration of a trademark, opposition proceedings, declaration of use of registered trademarks and invalidity proceedings. Here are the highlights:

Natural and legal persons. The first part of article 87 (“industrialists, traders or providers of services may use a trademark …”) was amended to indicate that “any person, natural or legal may use a trademark in industry, commerce or in the services that they provide. However, the right to its exclusive use shall be obtained by its registration with the Institute”. Such amendment eliminates any doubt regarding whether the Law limited the use of a trademark only to “industrialists, traders or providers of services”.

New trademark definition. The former wording of article 88 limited the registrations to any visible sign. However, it is now possible to register non-traditional trademarks, due to the new definition included in the Law, which establishes that a trademark is “… any sign perceptible by the senses and susceptible of being represented in a way that allows determining the clear and precise object of protection, which distinguishes products or services from others of the same type or category on the market”.

Thus, section II of article 113 does not anymore require specifying whether the sign is a wordmark, figurative, three-dimensional or combined. It is now established that the representation of a sign must be included in the application filed with IMPI.

Signs that can be registered as a trademark. According to the amended article 89, holograms, combination of colors, sounds, scents, and trade dress are eligible for registration.

"Valentina”, trade dress application number 2130389,
filed by Salsa Tamazula, S.A. de C.V.
(and one of this Kat’s favorite spicy sauces)

In this context, trade dress is defined as the “… plurality of operative elements; image elements, including, among others, the size, design, color, shape layout, label, packaging, ornamentation or any other that when combined, distinguish products or services on the market …”. Recently, IMPI published on its website that “a picture or a drawing in black and white or color, showing the width, height and volume of the sign to be protected, as well as a detailed description”, is required for filing a trade dress application.

Distinctiveness acquired by secondary meaning. The antepenultimate paragraph of article 90 indicates that the grounds for refusal of registration of a trademark contained in sections I, II, III, IV, V and VI, which inter alia refers to generic and descriptive signs, “… shall not apply when the trademark has acquired, for the products or services for which the application has been filed, a distinctive character derived from the use that has been made in commerce”. However, a three-dimensional shape will not acquire distinctiveness by secondary meaning “… [when] … the shape [is] inherent to its nature or functionality …”, according to the penultimate paragraph of article 90.

New grounds for refusal of trademark registrations. Sections XX, XXI and XXII were added to article 90 to regulate new grounds for refusal in respect of the “… name of a natural person that is identical or confusingly similar to a trademark application filed earlier that it is in process or a trademark registration in force, or a published trade name, in connection with similar products or services; … [t]he signs that reproduce or imitate names or elements that refer to a plant variety protection, as well as animals breeds, that may cause confusion in the consumer in connection with the products or services to be protected, and …[t]he signs filed in bad faith” which inter alia are those signs “… filed in a way that is contrary to best practices in commerce … or in which an unfair advantage is sought in prejudice of the legitimate owner”, respectively.

AOs and GIs - Grounds for refusal of trademark registrations. Amended sections XI and XII of article 90 establish that “[t]he appellations of origin, geographical indications, names or signs of places, known for the manufacture or production of certain products or the provision of certain services; as well as those that are accompanied by expressions such as: "kind", "type", "style", "imitation", "produced in", "manufacturing in" or other similar terms that create confusion in the consumer or imply unfair competition”, as well as the “[t]he names of places of private ownership, when they are special, not liable to be confused and are characterized by the production of certain products or the provision of certain services, without the owner’s consent”, are not eligible for trademark registration. 

Surnames, images and voice of persons - Grounds for refusal of trademark registrations. Section XIII (formerly section XII) of article 90 prohibits the registration of “names, surnames, nicknames or pseudonyms of persons who have acquired such prestige, recognition or fame that may create a risk of association, mislead or deceive to consumers, unless the application has been filed or expressly consented by said person or whoever has the right in question”.

Likewise, in addition to the portrait and signatures of persons, their images and their identifiable voices cannot be registered as a trademark without their express consent or, if they have deceased, by whoever has the right in question.

Literary or artistic works - Grounds for refusal of trademark registrations. Moreover, according to section XIV (formerly section XIII) of article 90, “[t]he identical or confusingly similar names to the titles of literary or artistic works, as well as the reproduction or imitation of the elements of said works; when … they have such relevance or recognition that they may be liable to deceive or mislead the public because they unfoundedly believe that there is any relationship or association with said works”, are not eligible of trademark registration unless it is expressly authorized by the owner of the right in question.

Furthermore, the total or partial reproduction of literary or artistic works are not eligible for trademark registration without the copyright owner’s consent, in accordance with the second paragraph of section XIV (formerly section XIII). Likewise, the third paragraph of this provision establishes, as a ground for refusal of a trademark registration, fictional or symbolic characters or real personages portrayed that have such relevance or recognition, unless the application has been filed by the owners of the right in question or a third party with their consent.

Stay tuned for the second part of this Kat’s report on the amendments of Mexican IP Law!

First picture is courtesy of Arheely Garza.

Second picture showing a “Valentina” is from IMPI’s website regarding the trade dress application number 2130389, filed by Salsa Tamazula SA de CV.

Third picture is courtesy of Dante Gbn.