May 18, 2018
AMENDMENTS TO TRADEMARK PROVISIONS OF THE
MEXICAN INDUSTRIAL PROPERTY LAW HAVE BEEN PUBLISHED
Today was published in the Official Federation Gazette, the Amendment Bill to the Industrial Property Law which relevantly changes trademark law in Mexico. The Amendment Bill will be enacted after 60 working days.
This amendment to the Industrial Property Law is a huge step to update trademark law our country. Such updates are relevant because through the Decree, non-traditional trademarks are included in the Law, secondary meaning is now accepted, coexistence agreements are recognized, trade dress will have a better definition and protection, collective marks are having a better regulation, certification marks are now included, the trademark opposition proceedings will have a more contentious nature which will allow the filing of evidence and a resolution will have to be issued with respect them, a declaration of real and effective trademark use must be filed by all trademark owners at the Mexican Institute of Industrial Property (IMPI) in order to avoid the automatic lapse of their trademark registrations, bad faith trademark registration will be forbidden and will also be a ground for trademark cancellation, no trademark registration will be allowed when it includes characters or any element of an artistic or literary work, and no trademark registration will be granted if it includes a plant variety.
These updates will benefit both Mexican and foreign trademark owners with an improved legal system that will protect their interest with respect their distinctive signs and will give better ways of trademark enforcement and protection. These amendments help introduce the Mexican trademark protection well into the 21st century. Arochi & Lindner, as always, will be side by side with its clients in order to obtain the best results regarding their trademark portfolio.
We must add that a set of relevant amendments and updates will be programmed by IMPI is the next step, in order to continue with the upgrading of the Mexican trademark legal system. You can expect, that our firm will be deeply involved, as was with the Amendment Decree, in this relevant process.
The relevant changes, as were recently described are:
- “Any person” may register a mark (Article 87). The law previously stated that only “industrialists, traders and service providers” may apply for registration.
- Marks need no longer be visible to be registered (Article 88). A mark need only be perceptible by the senses, and capable of being represented so that it is clear exactly what is being protected.
- Some types of non-traditional marks that were previously denied protection will now be registrable, including sounds, scents, holograms and trade dress (Article 89).
- Descriptive terms, terms in common use and nondistinctive trade dress previously ineligible for registration will now be registrable, based on secondary meaning (Article 90).
- Applicants may now overcome a refusal based on confusing similarity by obtaining the express consent of the prior trademark owner (Article 90).
- The provisions relating to collective marks have been expanded and clarified (Articles 96-97 bis 1).
- Certification marks will now be registrable (Articles 98-98 bis 4).
- Applications for registration must now identify “specific” products or services (Article 113).
- The provisions governing trademark oppositions have been modified (Articles 120-125). The trademark opposition proceeding will include the possibility to file the corresponding evidence by the opponent and the solicitant. Also, IMPI will have to issue a resolution with respect the opposition.
- Registrants must now file a declaration of continued use during the three months after the third anniversary of the registration date (Article 128). The registration will lapse automatically if the declaration is not filed.
- A trademark registration may be declared invalid if it was “obtained in bad faith” (Article 151.VI).
For any comments and questions, please do not hesitate to contact us for further information.