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Reflecting on the adoption of non-traditional trademarks one year on




Jorge Vega and Juan Carlos Hernández of Basham reflect on Mexico’s adoption of non-traditional trademarks a year ago, analysing the response to this decision as well as the challenges arising from it

On August 10 2018, amendments to Mexico's Industrial Property Law (IPL) came into effect. These amendments resulted in novel alternatives for trademark protection and created new opportunities. These changes included acquired distinctiveness in order to obtain registration of a trademark, the regulation of consents granted by the owner of a cited prior right, the introduction of bad faith as an impediment to the registration of a trademark, new provisions relating to well-known and famous trademarks, as well as the addition of certification trademarks to our system.

Non-traditional trademarks

In addition to these groundbreaking advancements, the amendments included the adoption of non-traditional trademarks. As a result of this, the definition of "trademark" in intellectual property law moved from being "any visible sign that distinguishes goods or services from those of its same species or class in the market" to "any sign perceptible by the senses and susceptible of being represented in a way that allows determining the clear and precise subject of the protection, that identifies goods and services from others of its same species or class in the market."

In other words, currently IPL does not provide a limited catalogue of what type of trademarks are considered non-traditional and capable of registration and offers the possibility of a wide array of new trademark registrations, which may include protection for distinctive holographic representations, letters, colours, smells and sounds or a combination of these.

The adoption of non-traditional trademarks was, for many practitioners, somewhat unexpected. Trademark specialists in Mexico had discussed the need to modernise the IPL, but discussions centred on actions such as the adoption of an opposition system – which became a reality in 2016 – as well as on the incorporation of other aspects such as the already mentioned certification trademarks, objections to applications based on bad faith and geographic indications. However, the inclusion of non-traditional trademarks into our system produced a sceptical response, to an extent, given the particularities these registrations entail, including the need for certain capabilities and expertise from the Mexican Institute of Industrial Property (IMPI) and applicants. For instance, at trademark fora, it was questioned whether IMPI would have the specialised examiners for determining the registrability of sound marks, or if a smell would need to be represented with a chemical formula or with a sample. Questions regarding distinctiveness, examination processes and enforcement also arose frequently.

Reasons for the amendment

Interestingly, while non-traditional trademarks did not appear to be a priority for Mexico's industrial property system, the lawmakers in charge of the IPL reform viewed these marks as a necessary and important element to satisfy the current needs of commerce. The lawmakers behind the reform contended that "to date, in Mexico the registration of trademarks is limited only to visible signs, meaning those perceptible through words or images. However, in modern society, consumers attend to more specific details regarding the characteristics of the goods or services in the market when deciding to purchase." They also pointed out that, nowadays, consumers are reached by sensory means other than sight, such as smell or hearing, resulting in non-traditional trademarks of a smell or sound nature. The lawmakers also contended that non-traditional trademarks are capable of protection in various countries and jurisdictions, such as the United States of America, Japan, the United Kingdom and at the EUIPO.

Guidance and response

The amendments came into effect on August 10 2018 but were published in Mexico´s Official Gazette on May 18 2018. During this interim, the IMPI made efforts to provide possible applicants of non-traditional trademarks with certainty regarding the way these marks should be filed and described and, in general, the criteria that would apply during examination. Practices from intellectual property fffices from other countries and jurisdictions were studied. A special application format was created for "Holographic, Sound, Commercial Image or the combination thereof", which includes a space in which a description of the mark must be made and another one in which the sought after mark may be visually represented.

After the addition of non-traditional trademarks to the IPL, the question remained whether they would spur the interest of applicants or if they would remain as merely an anecdote in Mexico's trademark system. One year after this addition, the following number of applications have been filed:

379 commercial images

13 holographic

99 smell

59 sound

45 other (movement, taste)

Total: 595

The IMPI has given non-traditional marks significant relevance. The granting of the first registrations was widely covered on social media and other institutional communication channels and the general director of the IMPI personally handed out the first registration certificates.

In addition, it is important to consider the guidelines and requirements established by the authority when applying for the registration of non-traditional trademarks. For example, in order to protect a sound mark it is essential to describe and represent it through staves, phonograms (reproduction of an audio or representation through an oscillogram) or onomatopoeia and to accompany it by a physical support (in avi, mp3, mp4, wma, wmv, wav, m4a formats), which must not be greater than 10 MB. It must not be encrypted or protected in any way.

When filing an application for an olfactory trademark, it is not necessary to exhibit the product to which the trademark is being applied. It should only be exhibited when the IMPI requires this. For holographic trademarks, the holographic effect must be represented, and, if necessary, the different angles must be shown in order to be correctly perceived.

Challenges

We are optimistic about the changes, but still have a few doubts. Due to the amendments, the IMPI faces new challenges, such as the absence of defined criteria and lack of prepared personnel that can correctly examine and determine whether the proposed trademark is capable or not of registration.

Despite the guidelines established by the authority, applications to register non-traditional trademarks are being treated in a confusing manner and still causing controversy. Initially, the authority indicated that non-traditional trademarks should be carefully described. Now, the examiner requests that the application is filed with a short and concrete description of products or services, in order to avoid confusion. The examiner's desire to limit the description of the intended trademark means the limitation of the right of the owners to protect their products or services.

Benefits

Even though current criteria is still being reviewed and defined, the amendments made to the IPL bring exponential benefits to trademark owners. One of the most important advantages is that Mexico has finally managed to harmonise its legislation with that of other countries, which is an important step towards the attraction of foreign investment in our country, providing applicants with greater and better protection of their trademarks.

While there were no clear estimates regarding the expected number of applications, we believe it is safe to say that the expectations of both the IMPI and trademark practitioners have been surpassed. Applicants ranging from food and beverage companies to pharmaceutical laboratories, restaurants and banks etc. have taken advantage of this new opportunity to broaden or consolidate their trademark rights. It is likely that IMPI examiners will issue office actions during formal and substantive examination and that not all applications will be granted. However, applicants have shown interest in these new forms of protection and will learn how to comply with formal requirements and criteria regarding registrability.

In view of the above, we can conclude that, although we still have a long way to go regarding a clear, adequate and efficient process of registration for non-traditional trademarks, a significant advance has been made for trademark matters in Mexico, and it is safe to say that it is only matter of time before we obtain the desired results.

Jorge Vega
  Jorge Vega is an IP partner at the firm in the Mexico City office. He has extensive experience in all aspects of trademark, copyright and patent prosecution. He is specialised in trademark and copyright law. He provides legal consultancy in many different areas such as trademark searches (availability for use and registration of new marks), trademark and copyright prosecution, contracts, franchises, licence agreements, trademark use and trademark annulment and infringement litigation, among other areas. He is currently handling several IP portfolios for national and multinational corporations.

Juan Carlos Hernández
  Juan Carlos advises on trademarks and copyright. This involves crafting preventive protection strategies and the coordination of negotiations and litigation.

He also drafts contracts relating to intellectual property and has experience in domain name disputes, protection and safekeeping of trade secrets and performance of due diligence in the field of intellectual property.

He is specialised in the use and protection of intellectual property on the internet, digital media and social networks.


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