Uhthoff, Gomez Vega & Uhthoff SC.
Contributing editor Michelle Mancino Marsh
1 Ownership of marks
Who may apply?
According to the Mexican Law of Industrial Property, trademark regis- trations may be applied for by individuals and companies devoted to the manufacturing and sales of products or to the rendering of services.
2 Scope of trademark
What may and may not be protected and registered as a trademark?
In Mexico, trademark protection is obtained once the trademark is regis- tered before the Mexican Institute of Industrial Property. Any word, sign or three-dimensional figure that is capable of distinguishing products and services from others in the market may be registered as a mark. Mexican Law does not provide registration of non-traditional marks and thus own- ers of these kinds of marks should work together with their counsel to look for alternative means of protection.
3 Common law trademarks
Can trademark rights be established without registration?
While use of a mark may grant the individual or company certain rights such as grounds for a cancellation action upon prior use or the possibil- ity of opposing such use as an exception against an infringement action, the exclusive rights over a trademark are only obtained by means of registration.
Moreover, a mark may only be enforced against alleged infringers if it is already registered before the Mexican Institute of Industrial Property.
4 Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? What additional documentation is needed to file a trademark application?
According to the official document whereby the Mexican Institute of Industrial Property has established the terms in which a response in a trademark registration procedure should be issued, the examiner may issue his or her decisions in a file within a four- to six-month period from the date on which the last petition is filed.
Thus, an application that does not encounter any requirement or grounds for refusal may become registered within a four- to six-month period.
The official fees for the study, revision and issuance of a certificate of registration are in the amount of around 3,320 Mexican pesos.
If the application is objected to by the authority, then delays in obtain- ing the registration may be expected. Once a response to an official action is filed the examiner in charge will have another four to six months to issue a decision.
In the event official actions are issued then additional official fees will have to be paid in the amount of between 405 Mexican pesos and 810 Mexican pesos per requirement or objection.
To file a trademark application, the following is required:
- the word or phrase to be registered and a black and white or colour specimen in the case of designed or combined marks;
- the law does not require the exhibition of the document upon which priority is claimed. Thus, in order to claim priority rights it is only nec- essary to name the country of the base application with its filing date and the serial number, if possible;
- the products or services to be covered;
- the date of the first use of the trademark in Mexico, or confirmation that the mark has not been used;
- the domicile or registered business address of the applicant;
- the factory address or location of the main commercial establishment (street, number, city and country). This information is only required when an applicant claims a date of first use in Mexico; and
- a simplified power of attorney, which document has to be executed by an authorised officer of the applicant company and by two witnesses.
Accuracy of this information is very important since Mexican law provides that a trademark registration may be cancelled if it is granted upon false statements contained in the application form.
5 Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Mexico follows the International Classification of Goods and Services under the Nice Agreement in its 10th edition.
However, it is very important to verify the drafting of goods and ser- vices as examiners tend to be very strict concerning goods not expressly contained in the classification as described.
According to the Mexican Law of Industrial Property multi-class filing is not available.
6 Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? May applicants respond to rejections by the trademark office?
Trademark applications are subject to two different types of examina- tion. Initially a formal examination is performed to make sure that all the required information has been provided and that the goods or services to be covered are property drafted and classified.
In a second examination, the officer determines whether the proposed mark is subject to being registered, either due to its nature or in light of pre-existent registered marks or pending applications.
Applicants have a two-month term, counted from the date in which they are served with the official action, to respond to any objection, it being possible to obtain two extensions of one month each time.
The extensions do not need to be applied for as they operate automati- cally provided that complementary fees in the amount of approximately 405 Mexican pesos per month are paid in a timely fashion.
7 Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
When filing the application, the applicant must state whether the mark has been used. If no mention is made of this, then the law provides it should be presumed that the mark has not been used.
In Mexico, trademarks may be registered even if its use has not commenced.
The ownership of a foreign registration does not grant any right of priority on behalf of the applicant.
Mexican law does not expressly provide the time in which use of a mark must begin. However, since it is the granting of a trademark registra- tion that allows use of the mark, it has been construed that cancellation actions on grounds of non-use may only be filed when three years from the granting date of the registration have passed.
8 Appealing a denied application
Is there an appeal process if the application is denied?
The decision of denying an application may be challenged either by means of an administrative recourse before the Mexican Institute of Industrial Property or through a nullity action that must be filed before the Federal Court of Fiscal and Administrative Justice, which has a specialised cham- ber for intellectual property matters.
9 Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
According to current Mexican law, opposition procedures are not pro- vided. Consequently, trademarks are only published when they have been granted into registration. The owner of a prior application or registration may file a letter of protest; however, the examiner is not compelled to take same into account when ruling an application.
Thus the only means to expunge a trademark registration is by lodging a cancellation action, which may be grounded upon the following causes of action:
- the registration was granted against the applicable provisions;
- a third party claims to have rights over the mark derived from prior use in connection with the same or similar goods;
- the registration was granted upon false statements contained in the application form;
- the registration should not have been granted in the light of a pre- existent mark covering the same or similar goods or services; or
- the registration was obtained in bad faith, namely by a distributor, licensee or agent of a foreign registered mark.
Costs related to cancellation actions depend on many factors such as the type of evidence to be rendered and whether certification, legalisation and translation of documents will be required. On the other hand, in Mexico there are no standardised tariffs or guidelines regarding professional fees, which may vary depending on the engaged firm.
Thus, it is of utmost importance to work closely with counsel to come up with a time- and cost-effective strategy.
10 Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
In Mexico, a trademark registration is in full force and effect for a 10-year period, it being possible to file subsequent renewals for 10 years. The 10 years are counted as from the filing date of the corresponding application.
In order to maintain the registration it is not compulsory to periodically declare or demonstrate its use.
However, if use of the mark is interrupted for three or more years any interested party may file for the cancellation of its registration on grounds of non-use.
While Mexican legislation does not provide a guideline on the use that suffices to defend a registration, for instance, if token use is enough, the law’s administrative regulation states that use of a mark should be per- formed in accordance with the practices of the relevant market.
11 The benefits of registration
What are the benefits of registration?
Benefits of registering a mark may be summarised in the two following statements: the possibility of using the mark without infringing the rights of a third party and the possibility of stopping a third party from using the mark.
Obtaining the registration of a mark provides the brand owner with a title that may be opposed if, for example, use of an evocative mark were alleged as an infringement to a third-party registered mark.
Additionally, the Mexican Law of Industrial Property expressly pro- vides that the exclusive right to use a mark and thus the right to enforce it against third parties is obtained by its registration before the Mexican Institute of Industrial Property.
Accordingly, actions to prevent unauthorised use, provisional measures and border enforcement are only available to owners of registered marks.
May a licence be recorded against a mark in the jurisdiction? Are there any benefits to doing so or detriments to not doing so?
According to domestic legislation, licence agreements may and must be recorded before the Mexican Institute of Industrial Property in order to produce legal effects against third parties.
While Mexico is a signatory to international treaties that provide that use of a mark should inure on behalf of its owner if the owner controls such use, it is advisable to record licence agreements.
For many years the federal courts held that domestic law had a prefer- ential effect with regard to international treaties. Consequently, recordal of a licence agreement was considered as the only manner in which use performed by a licensee could inure to the benefit of a registrant.
At present, the Federal Court’s criterion is different as they have considered international treaties have the same constitutional rank as domestic law and, thus, there are many judgments that have recognised controlling use in light of NAFTA or TRIP.
Notwithstanding the above, in order to negate the dependence of a criterion that could change at some point, it is advisable to record licence agreements.
What can be assigned?
Rights derived from trademark applications and registrations may be assigned.
Unfortunately, the current criterion from the Mexican Institute of Industrial Property has been to sustain that benefits derived from the use of a mark and, in turn, goodwill are not transferred in an assignment. We expect that this criterion will be reversed by the Federal Court of Fiscal and Administrative Justice or by the circuit courts, as otherwise the value of a mark would be totally underestimated.
Assignments may be total or partial depending on whether the mark is entirely transferred or if only a portion of the property rights is assigned. In the latter case, the mark will be understood as being in joint ownership.
When negotiating the assignment of a mark it is important to verify that no other marks may be considered as linked. According to Mexican law, linking of a mark takes place when there are identical or confusingly similar marks covering products or services of a similar nature that per- tain to the same owner. If linked marks are detected, the authority will not allow the assignment of only one application or registration and therefore all of the marks should be included in the assignment document.
14 Assignment documentation
What documents are required for assignment and what form must they take?
In order to record an assignment, an original document of assignment, preferably depicting the involved registrations, or a duly certified and legalised copy, should be submitted along with a completed form. All docu- ments drafted in languages other than Spanish should be accompanied by their translation. The translation does not need to be certified.
15 Validity of assignment
Must the assignment be recorded for purposes of its validity?
The assignment of a mark must be recorded in order for it to produce legal effects against third parties.
16 Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
Mexican law recognises security interests over registered marks. The secu- rity interest should be recorded before the Mexican Institute of Industrial Property to produce legal effects against third parties.
In order to proceed with such a recordal an original document or a certified and legalised copy thereto must be exhibited along with the corresponding translation into Spanish, if applicable.
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Marking in Mexico is mandatory since it enables the registrant to pursue civil or criminal actions against an infringer.
Moreover, under the criteria of the Mexican Institute of Industrial Property, use of markings is necessary in order to obtain preliminary and precautionary measures, such as seizures of infringing merchandise and others.
The only symbols accepted by Mexican Law are: ®, MR or marca registrada. The display of the words ‘registered trademark’, the letters MR or the symbol ® may be used only in connection with the products or services for which the mark was registered.
18 Trademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
The enforcement of trademark registrations should be made before the Mexican Institute of Industrial Property by means of infringement action.
In these types of actions, the plaintiff can claim unauthorised use of an identical or a confusingly similar mark, it being always necessary that such use is performed in connection with goods or services that are identical or similar to those covered by the corresponding registration.
Additionally, manufacturing, transportation, distribution and com- mercialisation of counterfeit goods are activities that constitute felonies that may be pursued by means of criminal actions. 19 Procedural format and timing
What is the format of the infringement proceeding?
The administrative infringement procedure commences with the filing of a claim before the Mexican Institute of Industrial Property. Along with the claim, the plaintiff must exhibit and attach all documents offered as evidence. Documents must be submitted in the original or as certified and legalised copies and accompanied by their Spanish translation if they are drafted in a different language.
The Mexican Law of Industrial Property allows submission of all types of evidence. The only particular requirement is that confessions and wit- ness proof should be rendered in writing.
Once the plaintiff ’s writ is admitted, the Institute orders the service of the alleged infringer, who will have a 10-working-day period in order to file its responsive brief and supporting evidence.
According to Mexican procedural law, the plaintiff has a three-day term in order to rebut the exceptions and evidence submitted by the alleged infringer.
Thereafter, the Institute will grant both parties a five- to 10-day term in order to submit final allegations. Once this term expires the Institute will be able to commence with the drafting of its decision.
Prosecution of an infringement procedure may typically last seven to 12 months, depending on the amount and nature of the evidence s ubmitted by the parties.before the Federal Prosecutor’s Office.
20 Burden of proof
What is the burden of proof to establish infringement or dilution?
As a general rule, it is plaintiff who has the burden of proof to demonstrate the fact upon which an infringement is alleged.
However, the alleged infringer also has the burden of proof to demon- strate the facts upon which exceptions are opposed, for example, the exist- ence of a parallel imports status for the infringing goods.
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
According to the Law of Industrial Property the owner of a trademark registration and duly recorded licensees may initiate infringement and criminal actions.
If a registrant wants to prevent licensees from seeking remedy for an alleged trademark violation, then such a prohibition must be expressly contained in the corresponding licence agreement.
22 Foreign activities
Can activities that take place outside the country of registration support a charge of infringement or dilution?
Only activities performed within Mexican territory may be alleged as infringing conduct as the legal effects of trademark registrations are lim- ited to our country.
What discovery/disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
Mexican legislation does not recognise nor regulate discovery as it is understood in other jurisdictions.
However, a particular provision in the Law of Industrial Property pro- vides that if a plaintiff or an alleged infringer has offered all the evidence they have under their control and states that a certain piece of evidence is in the power of their counterpart, the authority may order the exhibition of such documents or object.
In such cases, the authority should take all the necessary steps to protect the disclosure of documents or information that may constitute confidential material.
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
The typical time frame for an infringement action before the Mexican Institute of Industrial Property may be of seven to 12 months depending upon the amount and nature of evidence that is submitted.
Once a decision is rendered, its revision before the Federal Court of Fiscal and Administrative Justice may take anywhere from eight to 12 months.
Finally, the decisions rendered by the Federal Court may be contested by means of a judicial appeal (amparo) that can be ruled within a six- to eight-month period.
25 Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
Costs related to infringement litigation depend on many factors such as the location of the premises of the alleged infringer, the number of premises, travel expenses, the type of evidence to be rendered and whether or not provisional measures are requested. Thus, a bond has to be submitted if the alleged infringer appears before the institute or not, as well as government fees.
On the other hand, in Mexico there are no standardised tariffs or guidelines regarding professional fees, which may vary depending on the engaged firm.
Thus, it is of utmost importance to work closely with counsel to come up with a time- and cost-effective strategy.
What avenues of appeal are available?
The decisions of the Mexican Institute of Industrial Property may be challenged either by an administrative recourse before the Institute or by means of a nullity action before the Federal Court of Fiscal and Administrative Justice, which has a chamber specialised in intellectual property matters.
Thereafter, the decisions rendered by the Federal Court may be con- tested by means of a judicial appeal (amparo) that has to be filed before a circuit court.
What defences are available to a charge of infringement or dilution, or any related action?
An alleged infringer could structure a defence upon parallel imports if the involved goods were legally introduced into the Mexican market by the brand owner or a licensee.
Another line of action would be to oppose prior use of the same or a confusingly similar mark within Mexican territory in connection with goods or services identical or similar to those covered by the registration upon which the infringement is alleged.
Additionally, the plaintiff could challenge the validity of a trade- mark registration or oppose its name or corporate name or grounding the infringement action in the manner that makes them somehow distinguish- able from the registered mark.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
During the prosecution of the infringement action, the plaintiff may request the adoption of provisional measures to prevent the infringement conduct persisting during the time of litigation.
These provisional measures may consist in seizure of goods, closing of premises, orders for suspending commercial or service activities related to the infringing conducts or even retrieval of goods alleged to be infringing.
Once there is a final and conclusive decision declaring the existence of a trademark infringement, the plaintiff may claim damages, for which purpose an action would have to be lodged before a civil court.
According to Mexican law, damages are awarded in an amount equiva- lent to at least 40 per cent of the public selling price of each product or the price of the rendering of services involved in the alleged infringement.
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
Depending on the nature of the involved goods, services, individuals or companies the owner of a registered trademark can submit its case to a non-governmental association such as an industrial chamber.
However, the decisions rendered by such associations are not enforce- able beyond the association’s sphere and, thus, would not have legal effects.
Moreover, to be able to claim damages it is essential to obtain a deci- sion from the Mexican Institute of Industrial Property declaring the exist- ence of the alleged infringements.
30 Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Mexican Law recognises and protects notorious and famous trademarks even if they are not registered in Mexico.
However, the statute of notoriety and fame is in reference to Mexico and, thus, the protection of such trademarks derives from commercial and advertising activities of which Mexican consumers may have been aware.
Accordingly, suitable evidence to argue notoriety or fame of a mark would consist of invoicing material showing sales to Mexican consumers and advertising material with a circulation within Mexican territory or that has been available to Mexican consumers.
Update and trends
Mexico became a part of Madrid Protocol on 19 February 2013. While some international registrations designated Mexico throughout 2013, the Mexican Institute of Industrial Property started issuing provisional refusals until December 2013.
Thus, throughout 2014 owners of international registrations have familiarised themselves with the criteria from the Mexican authorities, which have been debating issues such as the drafting of goods and services, the documents that should be exhibited along with jointly applied marks and the distinctive character of proposed marks.
Consequently, even though individuals and companies may now designate Mexico within an international registration it advisable that they still work closely with local counsel to prevent any foreseeable ground for provisional refusal.
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