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

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

Verónica Rodríguez Arguijo   April 24, 2019   No comments:

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.

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.

Read More

SUAVE has secondary meaning, but not very much of it, says Argentine Court

SUAVE has secondary meaning, but not very much of it, says Argentine Court

Jeremy   November 29, 2010   No comments:

A keenly contested trade mark dispute between Unilever NV and Laboratorio Cuenca SA has been the subject of a ruling by Argentina's Federal Court of Appeals.  In short, Unilever was the owner of the SUAVE trade mark, which it had used extensively on shampoos and conditioners since 1999 and for which it had two pending applications for registration.  Cuenca used the trade mark ISSUE -- quite different, but accompanied by the words 'Shampoo Suave', on its products. Unilever sued for infringement, while Cuenca filed a counterclaim for annulment of Unilever's applications.

According to the trial court, the word SUAVE -- meaning "smooth" or "soft" -- was not distinctive. The court dismissed the complaint and allowed Cuenca's counterclaim.  The Federal Court of Appeals disagreed.  While SUAVE was a weak mark, due to the scale of use which Unilever made of it since 1999, its registration of the mark should be allowed since the word had acquired secondary meaning. In the court's view, the adjective 'suave' was not necessarily descriptive of shampoos and conditioners, but merely indicated a quality of the hair treated with the product.  However, Unilever's infringement claim still failed.  Because SUAVE was a weak mark, Unilever had to accept that third parties would use it in conjunction with their own marks, provided that they did not mislead consumers.

Source: "Federal Court of Appeals recognises secondary meaning doctrine", note by Fernando Noetinger (Noetinger & Armando, Buenos Aires) for World Trademark Review.

Read More