On 18 May 2018 amendments (the Amendment) to the Mexican Industrial Property Law (IPL) were published in the Official Gazette of the Federation, aiming to improve the current trademark protection system, by updating and adjusting it to international standards. This is the most thorough amendment to the IPL since 1994.
The Amendment became enacted on 10 August 2018. Baker McKenzie's summary of the Amendment's contents follows:
Recognition of non-traditional trademarks
The Amendment allows registration of non-traditional trademarks, which are capable of being perceived through the senses, including scents, sounds, color combinations, holographic signs, certification trademarks and the compound of operative and image elements, commonly known as "trade dress".
The Amendment also incorporates the "secondary meaning", which is applicable to those signs that ab initio lack distinctiveness (for example, generic or descriptive trademarks), but through their use, promotion or advertising, acquire sufficient distinctiveness in commerce, enabling the possibility to obtain protection through their registration.
The Amendment provides the possibility of submitting express written consents (through a letter of consent or coexistence agreement), to overcome blocking impediments, such as likelihood of confusion with previously registered distinctive signs, covering the same or similar goods or services.
Specific goods or services
The Amendment also establishes that the goods or services sought to be protected in a trademark application should be specific, and that heading classes and broad or vague specifications will no longer be accepted.
Trademark use declaration
Furthermore, trademark owners have the obligation to file a Declaration of Use, stating the specific goods or services over which the mark has effectively been used in Mexican commerce, (a) at the third year counted from the registration's grant (this provision will not be applicable to trademark registrations granted before August 10, 2018), and (b) simultaneously with the trademark renewal application.
If the owner fails to timely submit such Declaration of Use, the trademark registration will automatically lapse.
The Amendment modifies the opposition system to a more contentious-oriented procedure. Under the new legal framework, both parties have the right to file evidence and final pleadings to support their defense, and it is now mandatory for the Mexican Patent and Trademark Office to issue an opposition resolution with a reasoned assessment and legal grounds. In turn, the resolution can now be challenged.
As for litigation, the Amendment modifies the statute of limitation to 5 years in lieu of 3 years, for raising a trademark invalidation action based on local or overseas prior use.
Another modification is the inclusion of the invalidation action based on bad faith, which will not be subject to any statute of limitation. The legal grounds for this action will apply when applicant intends to obtain a trademark registration against good uses or customs in commerce or industry; or seeks to obtain an undue benefit in detriment of the legitimate owner of a previously registered trademark.
Additionally, the Amendment includes the possibility of claiming the invalidation action of a trademark registered in Mexico, by any person who has had a direct or indirect relationship with the owner of an identical or confusingly similar trademark registered abroad.
Applicability of the amendment to pending cases
It is important to note that those applications, oppositions and procedures that were filed or in process at the time this Amendment became effective, will be resolved according to the legislation in force at their time of filing.
Amendment to regulations of the IPL
Derived from the Amendment, it is foreseeable that in the near future the IPL Regulations will also be modified, in order to specify the general provisions of the Amendment for their due implementation.
At Baker McKenzie we are at your service, in case you have any question regarding this topic.