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What are the potential pitfalls in Mexican IP law?




Diego G Rossi, Gilberto Martínez Maldonado and Ana L Vargas of Iberbrand analyse the potential issues that can arise when seeking trademark and patent registration in Mexico and detail the firm’s ability to help clients with various issues

When we talk about the Mexican IP world, we assume that, in comparison with other jurisdictions, our country will behave in the same way when it comes to the law on registration of trademarks and patents. However, when requesting the protection of a trademark in Mexico, many of our clients, brand owners of a trademark right abroad, have faced recurring problems when requesting or claiming the protection of that right in Mexico.

Different legislation

Although there are several international treaties to which Mexico is also a party, it should be noted that protection will cover only Mexico and its examination and possible granting will be subject to national legislation. Below are some provisions that might cause issues:

a) classification criteria for products and services;

b) the prior use of a trademark in Mexico or abroad does not generate automatic protection rights, as in other jurisdictions;

c) scope of the opposition, as it is limited;

d) multi-class protection is not allowed in Mexico.

Costs

On some occasions and because the multiclass system is not applicable in Mexico, this means a greater cost for the applicant. Although it is important to highlight that in Mexico, the average cost is affordable.

Deadlines

Although Mexico is a country whose response deadlines are some of the most agile, they are still long when compared with other procedures before other authorities. This is complicated for applicants seeking to obtain urgent registration of a brand for some issue, probably of a commercial nature.

Feasibility of use and registration

As in other jurisdictions, it is always advisable to conduct a search for feasibility and risk of prior use to anticipate a possible rejection of trademark registration. However, for some applicants, due to urgency or costs, this is not practical.

If you would like to know more about this problematic panorama and how to solve it you can reach the the Iberbrand Team, and we can advise and/or help you.

We have created our own system which we have called "The Iberbrand Way".

The Iberbrand Way

Our good practices

There is no manual on how to be a recognised intellectual property firm in Mexico, LATAM or worldwide. As part of our experience and the philosophy we share, we have learned that the size of the firm is not the answer, or the length of time the firm has existed. For us, it is about the quality of the service we deliver.

We have a philosophy that can be divided into three pillars: everyone in the team should get involved, we give value to people and their expertise, and we can adapt to the situation. We employ these three in order to deliver the best outcome: surpassing our clients' expectations.

This "way", the Iberbrand way, started some years ago from our first belief that every case we take on is our own, and, actually, if you hesitate and think about this, every matter is really ours from the first moment the client relies on us.

A firm recommended by clients is like a tree full of healthy branches. Our job is to keep every branch strong and reliable for use. Taking this analogy is how we have become open and prepared for change and looked for results that would be creative and innovative for our clients®.

  • First of all, a very important practice, we provide the complete information from the beginning, with the total costs and the different scenarios that may occur.
  • We do not stop any matter, keeping in mind the fact that any member of the team is well prepared, informed and can provide the answer, service or even deliver the results. Each one of us is committed to delivering exactly the same quality we are used to.
  • We provide professional/considerate treatment. Since the client relies on us, we need to communicate with trust and professionalism. A mindful and helpful way is also a good way. The client needs to feel understood. Consideration breaks cultural barriers, we have proven this.
  • At Iberbrand, we believe in experience and in people, the people that work for us and the people we work for. There is dedication, experience, expertise, and the most important one – team work.
  • Providing multiple solution alternatives. Having a backup plan involves strategy. Different alternatives are a derivation of knowing where we want to go and what we want to achieve. Part of our job, according to our experience, is giving different solutions and thinking out of the box. This last one is very important. There are processes that cannot be skipped. However, there are different ways to reach the solution.
  • We have faced different scenarios related to countries, marks, patents and litigation. Our experience gives us the advantage of knowing before the competition what can happen. Knowing how a solution used before can be reinvented serves as the best solution in specific situations.
  • Being quick. Referring again to strategy, when you are the one who starts communication, you have the advantage against your opponent, and this gives you more chances to win. That is also the reason why we care and have a well-prepared team. We consider it important that when you have a compromised coworker, it reinforces your communication and quality. Anyone in the team is able to give a good answer in the timing needed, fast and well.
  • LATAM project. We see LATAM as one entity (instead of focusing on each country one by one). When we talk to our clients, what we offer them is the link to the continent itself, not only one Caribbean or Central American country. We make sure that the solution works well and quickly for our clients. We have the know-how to do it. This technique has been one of our main differentiators and is one of our main strengths. At Iberbrand, we believe that working and thinking like this should be considered a good practice.
  • The way we treat our team is the same way the client is treated. A personalised service is good practice in different sectors of the industry, and we believe that in the field of intellectual property it is crucial. We began by saying that we treat each matter as if it were our own and it is. That is also part of the personalisation.
  • Honesty. Being honest is always the best practice in any situation. It will always give us the advantage of being trusted.

Iberbrand is a specialised intellectual property firm that combines a remarkable background and experience with a fresh approach to IP law in Mexico and Latin America, dealing with both industrial and intellectual property matters. Based in Mexico City, we provide strategic advice for protecting, maintaining and enforcing your IP Rights in Mexico, Latin America and the Caribbean. We talked with our clients and decided to share their comments about our service, and this is how we would like to close our article.

As we said in our initial paragraphs, we believe that a well-recommended firm is a strong one. We have worked with different countries' clients, dealing with cultural barriers that have been broken down through good practice and good results.

We want to thank our international and national clients for giving us the opportunity to share their opinions about the Iberbrand way, about working with us and about our good practices.

Brazil

"As per our experience with Iberbrand, we can confirm that working with Iberbrand is a pleasant experience. They are very friendly and responsive and the discussions are held with competent and experienced professionals."

David do Nascimento Advogados

Canada

"I solely use Iberbrand to assist my Canadian clients with protecting their trademark rights in Mexico, Latin America and the Caribbean. The Iberbrand trademark team offer concise and practical advice, all with a gracious attitude. They are also extremely responsive and reliable with their turnaround times, even when hit with tight timelines. "

Gowling WLG

Diego G Rossi
  Diego G Rossi is the founder of IBERBRAND® and the managing partner at the firm.

Diego’s background in this area of law spans over 25 years, during which he has acquired first-hand knowledge and broad experience in all fields of intellectual property, from consultation to enforcement. He has dealt with all possible scenarios and situations involving intellectual property.

His vast experience allows him to lead and support our team of professionals who have the highest standards of service, quality, and professionalism which makes IBERBRAND® a strong client-oriented firm.

He is personally involved in most areas of the firm and actively participates in cases overseeing their development and outcome.

Through his years of experience as an intellectual property attorney, Diego has built strong and important connections as well as a presence in Mexico and abroad. This gives the firm an advantage in negotiations and communications, considering that longstanding personal relations are always valuable.

Gilberto Martínez Maldonado
  Gilberto Martínez is one of the co-founding partners of IBERBRAND®. He heads the firm´s trademark and copyright department, bringing over 20 years of experience to his practice which encompasses all aspects of trademark and copyright law, particularly, searching advice, prosecution matters, licensing and assignments of trademark and copyright, and intellectual property due diligence for mergers and acquisitions. He is the primary point of contact for numerous senior managers, brand managers, in-house counsel, technology transfer professionals and inventors from various industries around the world.

He received his law degree from the Universidad Panamericana in Mexico City and went on to receive a postgraduate degree in intellectual and industrial property from the same university.

Gilberto is very active in the international intellectual property law community. During his many years of practice, he has taken an active role, serving on a number of committees and with IP-related organisations. Currently, he is a member of the Trademark Committee of Marques and served as a member of the Trademark Committee of the International Trademark Association (INTA) from 2007-2011. He is also an observer at the Asian Patent Attorney Association (APAA).

Ana L Vargas
  Ana L Vargas Ramirez is a co-founding partner of IBERBRAND®. She manages the firm’s litigation and international trademark departments.

Ana has been an IP litigator for over a decade and has practised intellectual property for the last 16 years. Relying on her experience in portfolio management as well as her experience as a litigator, Ana takes care of Iberbrand’s clients to identify and implement creative and cost-effective strategies for enforcing and defending their IP rights in Mexico. She has appeared before all levels of courts in Mexico, and also represents her clients before administrative authorities. As the head of the international trademark department, Ana also oversees trademark prosecution and manages trademark portfolios for clients requiring assistance in multiple jurisdictions. The international trademark department at IBERBRAND® not only assists local clients with registering and protecting their IP rights around the world, it also assists clients who require a one-stop-shop for all their IP needs throughout Latin America.

Ana has a special interest in providing strategic trademark advice in support of marketing and advertising campaigns in Mexico and Latin America and advises her clients on obtaining declarations of fame and notoriety for trademarks under applicable regulations in that area.


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