Who may apply for a trade mark?
Trade marks in Mexico are regulated under Mexico’s current Law of Industrial Property (LIP), which was enacted on 27 June 1991 and further amended on 2 August 1994, and also under the Regulations to the LIP.
Article 87 of the LIP establishes who may use and therefore own a trade mark registration, stating: ‘industrialists, merchants, or service providers may use trade marks in industry, in commerce or in the services they render’. Nevertheless, the right to their exclusive use is obtained through their registration with the Mexican Institute of Industrial Property (IMPI).
In Mexican practice, any person or entity is entitled to apply for a trade mark registration before the IMPI.
What is the scope of a normal trade mark?
A trade mark registration grants the exclusive right to use the trade mark in Mexico for the goods or services covered and will prevent any third party from obtaining a registration for an identical or confusingly similar trade mark. Likewise, with a registered trade mark, the right to pursue infringement actions against third parties is possible.
How long does registration take and what are the standard costs?
If the trade mark registration for a word mark does not face any objection as to its inherent registrability or any anticipation of a similar or identical prior registered mark, completing registration could take at least three months. In the case of a design trade mark, it could take at least five months. The reason for this difference in time for registration is because searches for prior registrations regarding designs are conducted manually by the IMPI.
The attorneys’ fees for filing a trade mark application are around US$500, rising to US$1,000 if the application faces any objection. The government fees for filing a trade mark application are around US$250. If objections are faced, further fees could be accrued in the region of US$125.
How are trade marks classified?
Mexico adopted the Nice Classification in 1989 and became party to the Nice Agreement on 21 March 2001, so the local system does not differ from the International Classification System as to the goods and services that can be claimed.
It should be noted that no multiple-class applications are allowed in Mexico because the principle of speciality is followed; therefore, trade marks in Mexico shall be registered in relation to specific products and services pertaining to one class in accordance with the list of the Nice Classification.
Is there anything particular about the examination process that applicants should be aware of?
All new trade mark applications are subject to a dual examination by the IMPI. The first "formal exam" is focused on checking compliance with all formal requirements provided by law (the official application form must be duly completed and the government fees paid, among other requirements). The inherent registrability (without evidence of use) is determined at this stage too, namely, whether the proposed trade mark has any negative linguistic (or other) connotations that would make it unacceptable in the local language.
Once the examiners confirm that the trade mark proposed complies with all the "formal" requirements, the second exam takes place. As part of this ‘novelty’ examination conducted by the examiners during the prosecution of all new trade mark applications, conflict with other trade marks is checked by conducting an online search of the IMPI’s database to determine whether there is already a trade mark (on record or at the registration stage) that could be considered similar or confusingly similar to the one proposed. If any similar trade mark is revealed in the search, it is analysed with respect to the proposed mark to determine whether the confusion between them is triggered by their graphic, phonetic or conceptual aspects, and considering the similarities between the products or services of interest.
If the examiners consider any prior mark as a barrier to obtaining registration of the proposed mark or that the application does not comply with all the formal requirements, an official action is issued detailing the formal requirements that are not met, or the novelty examination result, or both, but always by separate office actions, and granting the trade mark applicant a two-month term that can be automatically extended for a further two months to comply the formal requirements that were not met or to provide legal arguments against the alleged formal breaching or the cited mark and to try to overcome them.
What constitutes use of the trade mark? When must this be demonstrated?
Use in Mexico is not required to obtain registration; however, section III of article 113 of the LIP establishes the possibility of providing an exact date of first use of the trade mark in Mexico in the application papers if there was such use. The reason for requiring the exact date is that the LIP recognises use in Mexico as a source of rights against third parties.
According to the LIP, a trade mark registration in Mexico is in force for 10 years as of its filing date. However, if the trade mark registration is not used for of three consecutive years as of the registration date or for any further three consecutive years, it will become vulnerable to a cancellation action by third parties based on non-use.
Can three-dimensional or other unconventional marks be registered?
Three dimensional signs can be protected as trade marks as these are visible signs. The limitation as to what cannot be protected as three dimensional trade marks is established in article 90 of the LIP, which is a list of prohibitions and the only legal source for rejecting a trade mark application. The law prohibits three-dimensional forms of common usage or because said form is imposed by its nature of industrial function. Olfactory and auditory trade marks cannot be protected in Mexico.
What constitutes a well-known mark?
On 19 April 2005, the Mexican Senate approved a decree whereby some articles of the LIP were amended and new articles were introduced, all of them concerning well-known trade marks (the reform). The reform was published in the Federal Government Gazette of 16 June 2005 and came into force on 17 June 2005.
The reform can be summarised as having two important aspects:
· the introduction of two levels, namely a first-level ‘notorious trade marks’ and a higher-level ‘famous trade marks’; and
· the authority for IMPI to issue a declaration certifying that a trade mark is ‘notorious’ or famous.
This distinction is caused by the fact that the level of awareness is greater for some trade marks than for other trade marks and thus the scope of protection needs to be established differently. Under this rationale, trade marks that are generally well known in Mexico are placed at the higher level and called ‘famous trade marks’, whereas those trade marks that are relatively unknown in Mexico are placed at the first level and called ‘notorious trade marks’.
Under these principles, a trade mark will be deemed ‘notorious’ when a particular sector of the public or trade circle in Mexico knows of the trade mark as a result of commercial activities developed in Mexico, or abroad, by a person who uses this trade mark in connection with its products or services, or as a result of the promotion or advertising thereof. In turn, a trade mark will be deemed ‘famous’ when a majority of the public knows of it.
The second relevant aspect of the reform is that the IMPI is provided with the authority to issue a declaration certifying that a trade mark is a ‘notorious’ or a ‘famous’ trade mark in Mexico. This declaration must be implemented by a certificate from the IMPI, which shall be issued after certain requirements are met by the petitioner.
Thus, the declaration by the IMPI must be understood as a juridical act whereby a question of fact, namely whether a trade mark is ‘notorious’ or ‘famous’ in Mexico, is recognised for all legal purposes. Further, the declaration will be issued independently of the authority kept by the IMPI to estimate if a trade mark is ‘notorious’ or ‘famous’ within the context of trade mark litigation proceedings (either infringement or cancellation proceedings) or as a result of the examination of a trade mark application.
In other words, before the reform, the IMPI had the authority to estimate whether a trade mark was a well-known trade mark only in relation to litigation proceedings, as derived from the evidence filed by the owner of the well-known trade mark, or else related to the prosecution of an application for registering a trade mark that is identical or confusingly similar to a trade mark that the IMPI has deemed as well-known in Mexico. Under the 2005 provisions, the IMPI is authorised to declare that a trade mark is ‘notorious’ or ‘famous’ in Mexico independently from the context of trade mark litigation or trade mark procurement.
The IMPI has published the tariff for fees related to the Declaration of Notorious and Famous Trademarks, effective as of 14 September 2007. This is a welcome development, as owners of ‘notorious’ and ‘famous’ trade marks in Mexico had been waiting to apply to the IMPI for the issuance of declarations, which could not be made until the tariff was issued.
How do you appeal against a denied application?
If an application is denied by the IMPI, the applicant may choose between three different venues: a review recourse before the IMPI, an appeal before the Federal Court of Tax and Administrative Affairs (FCTAA), or an amparo suit before a federal district court.
A review recourse is a remedy that must be filed before the IMPI within 15 working days of the day after the date of notification of the denial. The review recourse is resolved by the administrative superior of the person who issued the denial at the IMPI. A review recourse is only advisable when the denial is founded on a clear mistake of the IMPI (for example, a denial based on an alleged lack of a particular document when the document was in fact filed).
If the denial is based on a prohibition of article 90 of the LIP, a review recourse is not advisable as it is very likely that the superior will confirm the denial resolution. The applicant may file an appeal before the FCTAA against a decision issued by the IMPI under a review recourse.
The appeal before the FCTAA can be filed within 45 working days following the date of the notification of the denial or the decision of the review recourse. This appeal is decided by an administrative entity (it is not a court of law) that decides whether the IMPI correctly applied the LIP.
Appeals are resolved by three administrative magistrates in public hearings, where the parties may not make oral arguments but only hear the discussion of the case between the magistrates. All arguments must be submitted in writing during the prosecution of the appeal.
In this appeal, the applicant or appellant must prove that the IMPI’s considerations to deny the application did not comply with the provisions of the LIP. The IMPI will be the counterparty, trying to prove the legality of its denial.
The losing party can make a final appeal before a federal circuit court against the decision of the FCTAA. This appeal must be filed within 10 working days of the day following the notification of the decision to the losing party.
The resolution of the circuit court is final. If the IMPI loses the appeal, it must comply with the resolution within a short period.
Due to recent Supreme Court jurisprudence, amparo suits are now available as a further venue to appeal denied applications. They can be filed within 15 working days of the day following the notification of the denial. The amparo is a procedural institution, which makes it highly technical.
One advantage of these proceedings is that, due to the requirements of procedural law, cases are decided in a very short time frame, ranging from two to five months, with stays being studied very quickly (within two days of filing of a suit). Another advantage is the higher level of preparation of officers and judges at the courts concerning IP affairs.
The main disadvantage is that under the amparo law, the judge is bound to first find a clear error in the decision under review and is not entitled to review the case de novo; thus, many of the decisions in amparo suits are remanded to the IMPI for further consideration, with certain guidelines that can be concerned mainly with the due process of law although in some cases, the judge actually gives guidance on the merits of the case.
Any decisions of the district court can be appealed before a circuit court.
How do you oppose another’s application?
Opposition proceedings are not allowed under the LIP; there is only the option to expunge a trade mark registration from the registry, based on any of the causes of cancellation established by the LIP in article 151, which are as follows:
· The trade mark is identical or confusingly similar to another one that has been used in Mexico or abroad prior to the date of filing of the application, and it is applied to the same or similar products or services, provided that the party who asserts the greater right for prior use proves they have used the trade mark continuously in Mexico or abroad prior to the mentioned filing date or declared use, then the applicable statute of limitations is three years as of the date the Trademark Gazette publishing the disputed registration was put into circulation;
· the registration was granted on the basis of false information mentioned in the application, related to the date of first use in Mexico (if any), to the factory address where the goods to be covered are or will be manufactured, or to the domicile of a commercial establishment where the goods or services are commercialised or rendered. The applicable statute of limitations is five years as of the date the Trademark Gazette publishing the disputed registration was put into circulation;
· the existence of a senior registration for a trade mark identical or similar to that covered by a junior registration, and the goods or services covered thereby are similar or identical in nature. The applicable statute of limitations is five years from the publication date of the Trademark Gazette detailing the disputed registration.
· registration is obtained by the agent, representative, user or distributor without authorisation of the owner of the foreign trade mark registration. No statute of limitations applies to this action; or
· a general cause of cancellation is available and it relies on the granting of registration against any provision of the IPL or of the law in force at the time registration was granted. This cause of cancellation has no statute of limitations.
Furthermore, article 130 and section I of article 152 of the LIP establish that if a trade mark is not used for three consecutive years on the products or services for which it was registered, the trade mark registration will be subject to cancellation for lack of use unless the holder or the user that has a granted licence recorded has used it during three consecutive years immediately prior to the filing date of the cancellation action for lack of use, or when circumstances exist that arise independently from the will of the trade mark holder that constitute an obstacle to the use of the same, such as importation restrictions or other governmental requirements applicable to the goods or services to which the trade mark applies.
Therefore, if a registered trade mark is not used for three consecutive years, it will become contestable on account of non-use.
Cancellation procedures are filed and prosecuted directly at the IMPI. However, the decision of the IMPI may be appealed by recourse to a review before the IMPI or before the FCTAA and the decision of this court may be further appealed before a circuit court. For more details of the appeal process.
When must registration be renewed and at what cost? How is a trade mark lost?
A trade mark registration in Mexico is in full force for 10 years as of its filing date, and to maintain such registration it is necessary to have use of the trade mark in Mexico within a term of three consecutive years counted as of its date of grant and for further terms of three years, otherwise the registration will become vulnerable to cancellation actions based on non-use. It is important to note that if the registration is not used and not contested by any third party, it is in full force until its renewal time. However, it would be necessary to conduct use of the corresponding trade mark registration within a term of three consecutive years prior to petitioning renewal, otherwise the renewal will not be warranted and the registration would lapse.
No proof of use is required. The renewal application includes a declaration under oath that the mark has being used according to the terms provided by the LIP.
How are trade marks jointly owned, transferred or assigned?
The LIP establishes that the rights deriving from an application for trade mark registration or from a registered trade mark can be transferred in the terms and with the formalities established by civil law. The transfer of rights must be recorded with the IMPI to be effective against third parties.
The civil law establishes no particular provision for the transfer of a trade mark, thus the requirements are the same as for the normal purchase of any merchandise. In that sense, trade marks can be transferred without any restriction, that is, with or without goodwill and with or without any part of the business assets.
There is only one special rule in the LIP for cases of transfer and it refers only to mergers. In the case of a merger, the LIP assumes that all the trade marks of the merger company are transferred to the merging company, unless stipulated otherwise. In this case, the merger has also to be recorded before the IMPI to have legal effects against third parties.
There is no form of assignment prescribed in Mexico, therefore the original assignment document or a signed copy, notarised and legalised by apostille executed by both parties will be accepted by the IMPI.
The assignment is valid and in force between the assignee and assignor regardless of its recordal. However, the assignment must be recorded before the IMPI to have effects against third parties and to be recognised as well as valid and enforceable against subsequent assignees acting in good faith, against other third parties and in courts and administrative agencies, such as with the IMPI. There is no monetary penalty for failure to record an assignment.
What are the different avenues for infringement? What is the procedural format and timing for each?
A trade mark registration can be enforced against alleged infringers in two different venues. Where the infringer is using a confusingly similar trade mark distinguishing identical or similar goods or services to the one covered by registration, the trade mark registration can be enforced against the infringer by filing an infringement action before the IMPI.
Where the infringer is using a trade mark identical to the one registered to distinguish the same goods or services covered by registration (counterfeit), the trade mark registration can be enforced either by filing a criminal action before the Federal Prosecutor’s Office or by filing an infringement action before the IMPI. With respect to the border enforcement mechanisms, please see question 11.
The IMPI is not a court of law, but rather an administrative authority. The consequences of the IMPI’s resolution declaring an infringement are: a fine imposed on the infringer and an order to immediately stop the infringing activities. A civil action to claim damages before a civil court is available, once the IMPI’s resolution declaring the infringement of a trade mark registration is final and beyond the possibility of appeal.
The criminal law establishes no provision regarding trade mark enforcement; only the LIP defines what constitutes trade mark infringement and trade mark counterfeiting. Infringement is prosecuted before the IMPI and counterfeiting before the Attorney General’s Office.
The prosecution of an infringement claim before the IMPI is simple and it begins with the filing of a formal written claim. Once the IMPI admits the claim, it serves a notice on the defendant giving it 10 days in which to answer. The defendant is to answer the claim alleging whatever it deems pertinent, and thereafter the IMPI decides on the merits of the case. Both the plaintiff and the defendant must produce the supporting evidence at the time of filing the claim or answering it, respectively. The IMPI’s decision can be appealed before the FCTAA. The decision of this administrative court can be appealed to a circuit court.
To prove the infringement, the plaintiff is entitled to file any kind evidence available except confessional and testimonial evidence. The most commonly used evidence to help prove an infringement is an inspection of the premises of the infringer. The inspection is conducted by an IMPI inspector and it usually takes place at the moment of serving notice of the claim or the order imposing a preliminary injunction on the defendant. A form of discovery is available for the plaintiff, which is fully explained in question 22.
By the same token, the LIP provides the option of requesting and implementing provisional injunctions, before the filing of the infringement claim or at any time during the prosecution thereto against infringers.
Regarding counterfeiting, there is a criminal enforcement mechanism where the infringer uses a mark identical to a registered trade mark for identical goods or services, in which the trade mark owner can enforce its rights by filing a criminal action before the Attorney General’s Office.
To commence a criminal action, the injured party must first file a complaint.
Upon receiving the complaint, the Attorney General’s Office will launch a preliminary inquiry to determine whether a crime has been committed and, if so, who is responsible. The district attorney gathers all evidence required to reach a conclusion, with the assistance of the injured party. If the results of the inquiry are positive, the district attorney will submit the matter to a federal district judge who, following precise constitutional and legal procedures, will decide whether an apprehension order should be issued against those allegedly responsible for the crime. Once the authorities (the federal police) have complied with the apprehension order, the federal judge will issue a ‘formal prison’ order, which serves as the starting point of the corresponding trial. The parties to the trial are the Attorney General’s Office and the defendants.
The defendants may appeal against the two court orders. The trial is an adversarial proceeding involving testimonies, cross-examinations, allegations, evaluation of evidence and so forth. After weighing up the evidence, the judge will decide whether to convict or acquit the defendants. The unsuccessful party may appeal the decision before a unitary court, whose decision is binding.
Criminal penalties range from between two and 10 years’ imprisonment, to approximately US$100,000 in fines.
How are counterfeits contested?
Through a criminal enforcement mechanism where the infringer uses a mark identical to a registered trade mark for identical goods or services, in which the trade mark owner can enforce its rights by filing a criminal action before the Attorney General’s Office.
To commence a criminal action, the injured party must first file a complaint.
Upon receiving the complaint, the Attorney General’s Office will launch a preliminary inquiry to determine whether a crime has been committed and, if so, who is responsible. The district attorney gathers all evidence required to reach a conclusion, with the assistance of the injured party. If the results of the inquiry are positive, the district attorney will submit the matter to a federal district judge who, following precise constitutional and legal procedures, will decide whether an apprehension order should be issued against those allegedly responsible for the crime.
Once the authorities (the federal police) have complied with the apprehension order, the federal judge will issue a ‘formal prison’ order, which serves as the starting point of the corresponding trial. The parties to the trial are the Attorney General’s Office and the defendants.
The defendants may appeal against the two court orders. The trial is an adversarial proceeding involving testimonies, cross-examinations, allegations, evaluation of evidence and so forth. After weighing up the evidence, the judge will decide whether to convict or acquit the defendants. The unsuccessful party may appeal the decision before a unitary court, whose decision is binding.
What rules cover passing off or unfair competition?
In Mexico passing off is not recognised per se in the LIP as in the common law; however, unfair competition is regulated in the provisions set forth in our law through an infringement action prosecuted before IMPI.
In general terms, the section I of article 213 of the LIP provides that it may constitute an infringement to carry out activities contrary to good use and customs in industry, commerce and services that imply unfair competition and that are related to the subject matter of said Law.
In order to succeed in an infringement action based on unfair competition, plaintiff has to prove that within the exercise of industrial or commercial activities, the defendant committed acts which confuse or lead the public to confusion, error or deceit, by making it believe or presume, without foundation the following:
a) The existence of a relationship or association between an establishment and that of a third party;
b) that products are manufactured under specifications, licenses or the authorisation of a third party;
c) that services are rendered or products are sold under the authorisation, licenses or specification of a third party;
d) that the product in question originates from a territory, region or locality other than the true place of origin, inducing the public to error as to the geographic origin of the product.
In the case that this action has to be prosecuted before IMPI through an infringement action, the consequences of the IMPI’s resolution declaring an infringement are: a fine imposed on the infringer and an order to immediately stop the infringing activities. Likewise, a civil action to claim damages before a civil court is available, once the IMPI’s resolution declaring the infringement based un unfair competition is final and beyond the possibility of appeal.
Is parody considered a valid defence?
In our country, the parody of trade marks is not deemed as a valid defence against an infringement action.
What about descriptive use, fair use or use in good faith?
The use of a descriptive trade mark can be considered a valid defence in an infringement proceeding, however, fair use or use in good faith per se cannot be used as a defence.
According to the LIP, a trade mark registration will have no effect against a third party who in good faith was using the same mark or another confusingly similar mark in national territory for the same or similar products or services, provided that said third party began to use the mark, uninterruptedly, prior to the filing date of the registration application or the declared date of first use.
In light of the above, is not the fair use or use in good faith of a trade mark which gives a third party a defence that can be opposed in an infringement action, but the prior and uninterrupted use of it.
When is it worth conducting a survey to provide evidence of reputation?
When the plaintiff is willing to file a cancellation action against a trade mark registration based on the fame or notoriety of its mark, in order to convince IMPI of this situation.
Also, in an infringement action based on unfair competition, it is worthwhile for a plaintiff to submit as evidence a survey showing the reputation of its company or establishment.
How do you appeal an enforcement decision? What other remedies are available?
If the action is prosecuted before the IMPI (infringement action), the final decision can be appealed through review recourse before IMPI or before the FCTAA, and the ruling of this court may be further appealed through an amparo suit before a federal circuit court.
If the enforcement is regarding counterfeiting (criminal enforcement) prosecuted before the Attorney General’s Office, the final decision may be appealed before a unitary court.