Trademarks and service marks are subject to constant evolution globally, with designs often modified to meet business needs.
Traditionally, trademarks have been used in a single representation. However, marketing techniques are opening the door to the adoption of so-called “fluid trademark usage,” a trademarking strategy in which a company uses several changing versions of its core trademark, or main trademark, without loosing its key identifying elements. This allows trademarks to be dynamic and interactive with consumers.
The fluid use of trademarks offers advantages from a commercial standpoint, as the trademark’s essence remains unchanged, and consumers often perceive trademarks in attractive and diverse ways because they are not tied to a single idea. Trademarks adapt to market changes, responding to needs and cultural shifts, and fostering emotional connections and values that generate greater customer loyalty. However, the fluid use of trademarks can have negative consequences under Mexican law, as will be discussed later.
Commerce has acquired a new meaning as a result of globalization and the internet, where trademarks and service trademarks have not been left behind. Companies have adopted various marketing techniques that can be advantageous for penetrating their target market by creating awareness and adapting trademarks to consumer preferences. For example, in some countries like Mexico, the color orange is often used in association with spicy food; however, in some Asian countries, the same color is used for toxic preparations, and pink is used instead for spicy food.
One of marketing’s tasks is to find ways to promote or advertise trademarks. However, these trademarks are sometimes used too loosely, which can negatively impact already registered trademarks and even a company’s entire trademark portfolio.
Article 233 of the Federal Law for the Protection of Industrial Property states that “a trademark must be used as registered, without changes that could alter its distinctive character.” This is highly subjective, as there is no specific rule or parameter to determine when changes to a trademark have altered its distinctive character.
Furthermore, it’s important to consider that in Mexico, the exclusive right to use a trademark is granted through registration, not through prior use, as is the case in other countries like the United States. Therefore, before making continuous use of a trademark by incorporating new elements or discontinuing its use as registered, it’s crucial to analyze whether registering the new version of the trademark is necessary.
However, if the new version of the trademark is not registered, the consequences of continuous use could be negative and risky for the owner. These consequences can range from the risk of facing a cancellation action for non-use to the inability to enforce rights by requesting an infringement claim, and even the inability to renew the registration.
Among the negative consequences that the owner of a trademark with continuous use may face is the infringement of third-party rights. This occurs if continuous use makes the resulting trademark confusingly similar to one previously registered by a third party.
A second consequence is that a third party may file a cancellation action for non-use, arguing that the originally registered trademark is no longer in use as registered. In this case, the trademark owner would have to provide evidence of actual use to demonstrate that the trademark has been used in commerce for at least the three years prior to the filing of the cancellation action for non-use. If evidence of fluid use of the mark is presented, it will depend on the subjective judgment of the authority to determine whether the new elements incorporated modify its distinctive character or not.
Continuous use of fluid trademarks has also consequences for maintaining a trademark registration. Under Mexican law, renewal applications are filed under oath, stating that the trademark is currently being used exactly as registered and without substantial changes. While the law does not require proof of use or the submission of samples with the renewal application, it is crucial to verify and analyze whether continuous use of fluid marks has altered the trademark’s distinctive character before filing for renewal.
Loosing the seniority acquired by a registration that cannot be renewed due to continuous use can have serious consequences. Under Mexican law, the registration of a trademark or service mark is subject to cancellation for prior use, whether in Mexico or abroad, for three years from the date of publication of the registration in the official database.
Consequently, if a trademark holder cannot renew a registration due to lack of continuous use and files a new application for the updated version, the resulting registration will be subject to the aforementioned cancellation action.
On the other hand, while it is possible to claim the date of first use in Mexico, in this case, the date of first use can only be claimed once the new version of the trademark has begun to be used.
To avoid unnecessary risks, a good alternative would be to obtain a trademark registration as a word mark. This registration (provided the word mark is not modified) will gain seniority and eventually become indisputable, while the trademark holder can replace registrations of the combined mark that includes designs without significant risk.
Fluent use of trademarks is not always a result of modernization. There are seasonal marketing strategies where trademarks are used fluently as a consequence of an event or holiday, such as Christmas, Halloween, etc.
The best alternative would be to register trademark variations before their commercial use, since, as mentioned earlier, in Mexico the exclusive right to use a trademark derives from its registration and not from prior use.
In conclusion, marketing and intellectual property are related disciplines, and specialists in both areas should work together to strengthen distinctive signs and provide trademark holders with the legal certainty that the rights derived from a registration are solid enough to be exercised. The fluent use of trademarks can offer advantages, and such use should not be overlooked.
However, before starting the fluid use of a trademark, it is important to analyze its impact and implement preventive measures to avoid the loss of acquired trademark rights or long and costly litigation, the results of which are always unpredictable.
By: María Elena Fernández
mfernandez@uhthoff.com.mx
