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

This post was first published on The IPKat blog:

This Kat summarizes in the second part of the report on the second batch of amendments to the Mexican IP Law, the highlights of the provisions thoroughly modified in relation to trademarks and administrative procedures. Read the first part here

Specific products and services. According to article 113 section IV, the specific products or services to be covered by the mark must be indicated in the application form. 

Co-existence agreements and letter of consent. The grounds of refusal of a trademark registration established in sections XVIII, XIX and XX of article 90, which mainly refer to signs confusingly similar to another in respect of which a pending application has been filed or a trademark registration in force, are not applicable when the “… consent is expressed, in writing, in accordance with the regulations of … [the] Law”. 

Collective marks. According to article 96, this type of mark can be registered by legally incorporated associations or groups of producers, manufacturers or traders of products, or services providers, in order to distinguish the products or services or their members on the market, as long as they possess common quality or characteristics and differ from the products or services of third parties. 
The application for protecting collective marks must be filed along with the regulations governing their use, which inter alia, must comprise “the manufacturing, production or packaging procedures, the penalties for breaching the regulations, and the power to exercise the legal actions of protection” of the rights of the marks, in accordance with article 97 BIS (formerly 97). Once the collective mark has been registered, the members of the association or groups that are the trademark owners may use it along with the term “Marca Colectiva Registrada” [Registered Collective Mark]. Moreover, a collective mark cannot be licensed (articles 97 and 97 BIS, respectively). 

Certification marks. Any “sign that distinguishes products and services whose quality or characteristics have been certified by their owner, such as … [t]he components of the products; … [t]he conditions under which the products have been manufactured or the services provided; … [t]he quality, processes or other characteristics of the products or services, and … [t]he geographical origin of the products”, as well as GIs, are eligible for protection as certification marks in accordance with articles 98 and 98 BIS. 
Legal persons are entitled to register certification marks, “as long as they do not do business that implies the supply of products or the provision of services of the same nature or type of those they certify”. However, if the certification mark is a Mexican GI, it can be filed only by “legal entities directly involved in the extraction, production or manufacture of the product to be protected; … [t]he chambers or associations of manufacturers or producers linked to the product to be protected; … federal government agencies or entities, and … [t]he governments of the federal entities in whose territory or geographical zone the extraction, production or manufacture of the product to be protected takes place”.
The application for protecting certification marks must be filed along with the regulations governing their use in accordance with the minimum requirements established in article 98 BIS-2, which inter alia comprise the technical specifications of the characteristics of the product or service to be protected, the verification procedure of such characteristics, the time frame in which the quality control on the production of the product to be protected would be carried out, and compliance with the regulations governing their use in accordance with the applicable Official Mexican Standards [NOMs] or other international regulation. 
Moreover, article 98-4 establishes that “owners will authorize the use of a certification mark to any person whose product or service complies with the requirements established in the regulations governing its use”. If so, the certifications marks may be used along with the term “Marca de Certificación Registrada” [Registered Certification Mark] and cannot be licensed (article 98 BIS-3). 
Declaration of notoriety or fame. The third paragraph of former article 98 BIS-1 (now article 98 TER-1) and section II of former 98 BIS-4 (now article 98 TER-4) have been repealed. Thus, registration is no longer a prerequisite for asserting that a mark has notoriety or fame in Mexico. 

Opposition Proceedings. Articles 120 (formerly repealed) to 120 BIS-3 regulate opposition proceedings in relation to trademark registrations (which is also applicable to the registration of slogans and publication of trade names). Once the formal examination of the application has been carried out, any person with a legal interest may file a notice of opposition within a month following of its publication in the Official Gazette. 
The notice of opposition must be filed along with evidence demonstrating that the application falls under any of the grounds for refusal established in articles 4 and/or 90, as well proof of payment of fees (around €174 per application opposed). If the notice of opposition meets the formal requirements, it is published in the Official Gazette, after which the applicant has one month for replying to the arguments and evidence submitted by the opponent. Once such period has elapsed, the parties have two days for submitting pleadings, after which IMPI will proceed to the substantive examination of the application. 
It should be noted that opposition proceedings shall not suspend the application procedures nor “prejudge the outcome of the substantive examination carried out by … [IMPI with respect to] the application”. Thus, after the substantive examination of the application is concluded, IMPI will issue the decision regarding the opposition proceedings filed. 

Declaration of use of registered trademarks. According to article 128, the owner must file a declaration of real and effective use of the trademark within the three months following the third anniversary from grant, along with the proof of payment of fees (around €46). If the owner fails to declare use, the registration will lapse (article 152 section II). 

Invalidity of trademark registrations. New grounds for the invalidity of trademark registrations are established in article 151, namely if the registration was obtained in bad faith (new section VI) and in the event that “… any other person who has had a relationship with the owner, directly or indirectly, of a trademark registered abroad, file[s] and obtain[s] the registration, of the said mark or of a confusingly similar mark in his own name without the express consent of the owner of the foreign mark”. In both cases, there is no deadline for starting invalidity proceedings when such grounds are claimed. 
Moreover, the term for starting invalidity proceedings based on previous use of a mark in Mexico or abroad has been extended from 3 years to 5 years. 

Administrative procedures
Title VI, chapter I, was modified in relation to article 183 which now establishes that IMPI will notify through the Official Gazette “all the resolutions, requirements and other office actions issued in relation to procedures of patents, registrations, and national publications, as well as those related to the maintenance of rights, except for the files provided in article 186 of … [the] Law”, which refer to pending patents, utility models and industrial designs. 

Administrative infringements
Article 213 section VII of Title VII, chapter II, provides as new administrative infringements, the use as marks of “names, signs, symbols, abbreviations or emblems referred to in … sections … XIII, XIV, … XVII and XX of article 90” of the Law. Thus, the use of identical or confusingly similar signs to a mark declared famous by IMPI now amounts to infringement. 

The second batch of amendments significantly modified Mexican IP Law, particularly regarding trademark provisions It seems fair to say that the long-expected regulation of non-traditional trademarks, distinctiveness acquired by secondary meaning, certification marks, opposition proceedings, as well as co-existence agreements and letter of consents, have all been well received. It will be particularly interesting to see how IMPI implements the requirements of a clear and precise representation of a sign entitled to registration in relation to scents and flavors, as well as the criteria for proving secondary meaning. 

It was a common practice to submit co-existence agreements and letter of consents when replying an office action, with the aim of overcoming the grounds of refusal contained in article 90 section XVI (now section XVIII), namely the similarity between the signs. However, such submissions were not successful in all cases, so certainly it is significant that this ground for refusal shall not be applicable when the consent is expressed in writing in accordance with the regulations of the Mexican IP Law. It is noted that the amendments to the regulations of the Law in this regard have not been issued. 

Another common practice, namely, the use of the class headings, or very broad description of products and/or services, will not be possible anymore, due to the amendment to article 113 section IV, which requires that the specific products or services to be covered by the mark in the application form be indicated.. 

It is expected that the new grounds for refusal of a registration, such as signs filed in bad faith (e.g. 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) and those related to literary or artistic works (e.g. reproduction or imitation of the elements of literary or artistic works), will strengthen the Mexican IP system. 

Since the entering into force of the second batch of amendments to the Mexican IP Law, 501 trademark applications have been filed in connection with trade dress, scents, sounds, holograms, other non-traditional marks, and certification marks between August and December 2018, according to the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” published on IMPI’s MARCANET database, reviewed by this Kat on 24 April 2019. 

Note that the first non-traditional trademark registrations have been already granted by IMPI in a public ceremony which took place on 7 February 2019

So, stay tuned for this Kat’s report regarding the granting of the first non-traditional trademark registrations in Mexico! 

First picture is courtesy of Arheely Garza. 
Second picture is from IMPI’s website regarding the certification mark application number 2089308, filed by Tequila Regulatory Council. 
*Stats and the bar chart are provided based on the numbers published in the “List of Applications for Registration of Certification Mark, Holographic, Sound, Olfactory, Trade Dress or the Combination thereof” available on IMPI’s MARCANET database, last review on 24 April 2019. 

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

This post was first published on The IPKat blog:

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.

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”. 

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 letter of consents, 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.

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 mainly 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.

Brasil más cerca de Madrid

La Cámara de Diputados de Brasil aprobó el pasado 3 de abril el Proyecto de Decreto Legislativo nº 860/2017 sobre el tratado internacional "Protocolo referente al Acuerdo de Madrid relativo al Registro Internacional de Marcas", más conocido como Protocolo de Madrid. El texto ahora pasa al Senado Federal.

El Sistema de Madrid permite proteger una marca en gran número de países mediante la obtención de un registro internacional que surte efecto en cada una de las Partes Contratantes que se hayan designado. Consta actualmente de 104 Miembros y abarca 120 países, que representan más del 80% del comercio mundial.

La preparación operativa realizada por el INPI para la implementación del Protocolo de Madrid abarca la modificación de los sistemas de TI utilizados en el procesamiento de pedidos de marca, la creación y modificación de procedimientos operativos, la edición de actos normativos y manuales, una reestructuración interna y el dimensionamiento y capacitación de los equipos.

Brasil sería el 7º país del continente americano que se adheriría al Sistema de Madrid.