Non-Traditional Trademarks, Declarations of Use, Acquired
Distinctiveness and Coexistence Agreements, Certification Trademarks
This year has brought many changes to Mexican IP Law, including a first round of amendments that came into effect on April 27, 2018, as previously reported, and a second round coming into effect on August 10, 2018. This second round of amendments is focused mainly on the trademark chapter of the national IP Law. The final touches are still being prepared, as new fees have recently been published and we still await the publication of specific filing requirements and applications forms.
The first round of amendments included changes to the term of design patents (up to 25 years), a reduction in the basic filing fee for all patent applications but with an excess page fee after 30 pages, and the inclusion of geographical indications alongside the existing definition of appellation of origin, allowing existing foreign indications to be recognized. For more details on these changes, please contact us or refer to our communications of April 10 and April 30, 2018.
The second round of amendments seeks to align and harmonize Mexican IP Law with global practices, and includes the recognition of non-traditional marks, changes to the trademark opposition process, formally recognizing acquired distinctiveness for descriptive marks, formally recognizing coexistence agreements and consent letters, and new requirements for showing use of trademark as well as other amendments directed to the enforcement of trademark rights.
Some of the specific amendments are:
- Article 87 of the IP Law was amended to specify that any person, either an individual or legal entity, could make use of a mark; this is in contrast to previous language that stated that only service providers or business persons had this right.
- Article 88 was amended to define a trademark as “any sign which is perceptible to the senses and which is susceptible of being represented in a manner that is capable of clearly and precisely distinguishing goods or services in industry or commerce from one and other”, allowing the recognition of non-traditional trademarks.
- Amendments to the trademark chapter defines specific requirements for Collective Marks, which include of Certification Marks, and the alignment of Geographic Indications for more comprehensive protection for associations, legal entities and final producers and service providers that commercialize or manufacture products or provide services from a specific region or area, based on the specific identifiable and distinct characteristics from these regions.
- Mexican Law will now accept descriptive trademarks, if it can be shown that the trademark has acquired distinctiveness through use.
- If a trademark opposition is submitted, the applicant will have the opportunity to submit counterarguments within a two day period.
- The amended Law includes the requirement for a “Declaration of Use”, which carries an official fee of approximately US$60.
- Trademarks granted under the amended Law will be required to show “true and effective use” three years after the grant date, by means of (at least) a declaration of use, otherwise the registration will be cancelled.
- Trademark renewals will be required to show “true and effective use” by means of (at least) a declaration of use.
- All notifications with respect to trademark matters will now be served to applicants via the Official Gazette of the Mexican IP Institute.
- Specific provisions have been included that establish that trademark applications submitted in bad faith are prohibited.
- Specific provisions have been included that allow confusingly similar trademarks to coexist if written consent of coexistence is provided by the owner of the cited mark.
We note that these amendments will apply to all applications submitted after August 10, 2018; applications submitted prior to this date will be examined based on the current legislation. However, all granted registrations will be treated under the terms of the amended Law (e.g., with respect to the requirements for the declaration of use). Finally, we note that these amendments apply to all applications, whether submitted through the national offices or whether as a national designation through the Madrid Protocol.
As with the implementation of any amendments, some issues will arise immediately through the examination process and other issues will arise within several years, e.g. with the renewal of a recently granted registration which will not be required to show use within three years but will require a declaration of use upon renewal in ten years. Regardless of this, we shall keep you informed and provide anticipated information so that you and your clients can make the appropriate decisions with respect to trademark portfolios in Mexico.
Should you require further or more specific information regarding any of these matters, please let us know and we will gladly assist you.