Mexico Q&A: Trademark Protection - Uhthoff

Mexico Q&A: Trademark Protection

By Carolina Ponce-Gonzalez

Uhthoff, Gomez Vega & Uhthoff

1.   What conventions, multilateral or bilateral agreements are pertinent to the protection of trade identities in your jurisdiction?

a.   Paris Convention.

b.   Hague Convention.

c.   Vienne Agreement.

d.   Nice Agreement.

e.   Singapore Treaty.

2.   What national legislation is pertinent to the protection of trade identities in your jurisdiction?

Our National Legislation is called “Industrial Property Law”, which at the same time is regulated by the “Industrial Property Regulation”. Their principal objects are:

a.   Establish the registration process and procedures for Industrial Property rights.

b.   Protect  our  Industrial  Property  by  regulating  and  granting  trademarks, commercial slogan, trade names, patents…

c.   Prevent acts that violate Industrial Property rights, by establishing sanctions and penalties against those acts.

3.   Is your jurisdiction a first-to-use jurisdiction or a first-to-register jurisdiction?

In our country, rights over trademarks are generated at the time our Trademark Office grants into registration a trademark, i.e. our jurisdiction is a first-to-register jurisdiction.

4.   Please describe the rights afforded by use and separately by registration in your jurisdiction.

•   Use: Prior use can be enforced to cancel a prior trademark registration.

•   Registration: Exclusive use of a trademark.

5.   What types of marks are registrable in your jurisdiction?

•   Word marks.

•   Device marks.

•   Composite marks.

•   Three-dimensional marks.

•   Commercial Slogans.

•   Trade names.

•   Collective marks.

•   Product marks.

•   Service marks.

6.   Are there any marks prohibited from registration in your jurisdiction?

Yes, Article 90 of our internal law establishes a list of terms / words that are prohibited for trademark registration.

7.   Who is proper applicant for registration?

Anyone.

8.   Can a partnership, individual, other legal body or non-legal body file and hold trademark rights?

Yes, anyone can file and hold trademark rights.

9.   Is your jurisdiction a member of Nice Classification?

Yes, it is.

10. Please list the documents required for filing a trademark application

Our legislation establishes the following  documents, as requirements for filing a new trademark application:

• Power of Attorney

o Simplified: One that has been executed in the presence of two witness, will serve to conclude the registration proceeding or,

o Formal: Duly certified and legalized, will serve to file any action before the TMO in the future, including renewals.

• Labels (if applicable)

o Measures:

ƒ Smaller than 10×10.

ƒ Larger than 4×4.

o With colours:

ƒ 20-30 labels send via mail.

o Without colours (B&W):

ƒ 1 electronic.

• Certified copy of the Priority Document (if applicable).

o However, this document can be filed at least three months after the new application has been filed.

• If the registration of a trademark is requested by two or more persons, rules governing the use, license, transfer of rights, voluntary cancellation and voluntary limitation of goods or services, must be attached to the application.

11. Please describe whether your jurisdiction is an examination jurisdiction and if so, please describe the kind of examination.

Yes, it is an examination jurisdiction.

The TMO performs a novelty exam in which it studies the inherent registrability of a trademark.

12. Please  describe  an marks  which  are  not  registrable  according  to  your legislation

• Trademarks, figures or three-dimensional animated or changing forms, that are expressed in motion, even when visible;

• The technical or commonly used names of products or services for which the protection of the mark is sought, and also those words that everyday language or business practice has made into the usual or generic designation of the said products or services;

• Three-dimensional shapes that are of public property or have come into common use, those that lack the originality that readily distinguishes them, and the usual and everyday shapes of products or those determined by their nature or industrial function;

• Three-dimensional names,  figures,  shapes  or  words  which,  when  their characteristics are considered as a whole, are descriptive of the products or services to which they are intended to afford trademark protection. The above shall include descriptive or indicative words which, in trade, serve to identify the kind, quality, quantity, composition, purpose, value or place of origin of the products, or the time of their production;

• Isolated letters, digits or colors, except where they are combined with or accompanied by elements such as signs, designs or names that give them distinctive character;

• The translation into other languages, the arbitrarily changed spelling or the artificial construction of words not eligible for registration;

• Signs that reproduce or imitate, without authorization, the coats of arms, flags or emblems of any country, State, municipality or equivalent political division, and the full or abbreviated names, symbols or emblems of governmental or non-governmental international organizations, or of any other officially recognized organization, including the verbal designation thereof;

• Signs that reproduce or imitate official signs or seals of control and warranty adopted by a State, without the authorization of the competent authority, or coins, banknotes, commemorative coins or any domestic or foreign legal tender;

• Signs that reproduce or imitate the names or graphic representations of decorations, medals or other prizes awarded at officially recognized exhibitions, fairs, congresses or cultural or sporting events;

• Proper or common geographical names and maps, and also gentile nouns and adjectives when they indicate the origin of the products or services and can cause confusion or error regarding such origin;

• The  names  of  towns  or  places  known  for  the  manufacture  of  certain products, to protect those products, except the names of places in private ownership when they are special and not liable to be confused, and when the consent of the owner has been obtained;

• The names, pseudonyms, signatures and portraits of persons, without the consent  of  the  persons  concerned  or,  if  they  are  deceased,  of  their surviving spouse, blood relations in direct line and by adoption and also collateral relations, both down to the fourth level of relationship;

• The title of intellectual or artistic works and the titles of periodicals and other distributed publications, the names of fictional or symbolic characters or real personages portrayed, stage names and the names of performing groups, except  where  the  owner  of  the  corresponding  rights  has  expressly authorized such registration;

• Three-dimensional names, figures or shapes liable to deceive or mislead the public, understood as being those that constitute false indications as to the nature, components or qualities of the products or services that they claim to protect;

• Three-dimensional names, figures or shapes identical or similar to a mark that the Institute considers well known in Mexico, to be applied to any product or service.

• A mark that is identical or confusingly similar to another in respect of which an  application has  been  filed  earlier  and  is  awaiting  registration or  to another that is already registered and in force, and is applied to the same or similar products or services, provided that a mark identical to one previously registered may be registered if the application is made by the same owner for use in connection with similar products or services;

• A mark that is identical or confusingly similar to a trade name applied to a firm or industrial, commercial or service establishment whose principal business is the manufacture or sale of the products or the provision of the services that the mark is intended to protect, provided that the trade name has been used prior to the filing date of the application for registration of the mark or the date of the declared use thereof; the foregoing shall not be applicable when the application for a mark is filed by the owner of the trade name, if no identical trade name exists that has been published.

13. Does your jurisdiction have an opposition procedure?

No, nevertheless, any third party is authorized to file a writ opposing to the registration of a trademark. However, the Authority is not obliged to take into account the statements asserted by the third party in the writ of opposition, when making a decision concerning the registrability of  a trademark application.

14. Is it possible to file cancellation proceedings in your jurisdiction?

Yes it is possible.

15. If so, please set out the procedure, including who has standing to cancel and the bases of cancellation

•   Procedure:

– Any request for an administrative declaration should be filed before the TMO.

– All writs shall contain the following particulars:

o Name of the requester and of his legal representative if any;

o Address for the receipt of notifications;

o Name and address of the counterpart or of his legal representative;

o The subject of the request, expressed in clear and precise terms;

o The facts;

o The underlying legal grounds.

o Originals or duly certified copies of the documents and statements on which  the  action  relies  shall  be  submitted with  the  request  for  an administrative  declaration,  and  the  corresponding  proof  shall  be offered.

– If the application does not comply with the abovementioned requirements, the TMO will issue an official letter, requesting the application to remedy the omission or to provide the appropriate clarifications; to that end the application shall be allowed a period of eight days and if the requirements are not complied with in the time allowed, the corresponding request will be rejected by TMO.

– On  accepting the request for  an  administrative declaration of  invalidity, lapse and cancellation, the TMO will notify the defendant of the administrative procedure established against its right, allowing him a period of one month for making (within a writ) whatever statements which best serve his interests. The notification will be made at the address given by the plaintiff.

– When it has not been possible to make the notification referred in the foregoing paragraph due to a change of address, the notice shall be served at the expense of the plaintiff, in the “Diario Oficial” and in a major national newspaper. The publication shall show an extract from the request of the administrative declaration and a period of one month shall be specified for the owner concerned to make whatever statement best serve his interests.

– After the notification, the defendant should file a statement which best serve his interest. Such document shall contain the following:

o The name of the owner concerned or alleged infringer and that of his representative if any.

o The address for receiving notifications.

o Exceptions and defenses;

o Statements or rebuttals of each of the points in the request for an administrative declaration.

o Legal grounds.

– After a study of applicable precedents and the consideration of all the evidences submitted by both parties, the appropriate administrative ruling shall be handed down and the parties concerned shall be notified accordingly.

• Who has standing:

– Ex-officio by the Trademark Office.

– Any interested party.

• Bases of cancellation:

– The registration of a mark shall be invalid when (Nullity petition):

• I. It is granted in violation of the provisions of this Law or that which was in force at the time of registration.

• Notwithstanding the provisions of this subparagraph, the invalidation action may not be based on a challenge to the legal representation of the applicant for the registration of the mark;

• II. The mark is identical or confusingly similar to another that has been used in the country or abroad prior to the filing date of the application in respect of the registered mark and has been applied to the same or similar products or services, provided that the person who asserts the stronger right by virtue of prior use proves uninterrupted use of the mark in the country or abroad prior to the said filing date or, where applicable, prior to the date of first declared use by the person who has registered it;

• III. The registration was granted on the basis of particulars contained in the application that were false;

• IV. The registration was granted in error, by mistake, or owing to a difference of judgment, there being another registration in force which is considered infringed because it is that of an identical or confusingly similar mark applied to identical or similar services or products;

• V. The agent, representative, licensee or distributor of the owner of a mark registered abroad applies for and secures the registration of the said mark or of a confusingly similar mark in his own name without the express consent of the owner of the foreign mark, in which case the registration shall be regarded as having been effected in bad faith.

9 Invalidation proceedings under this Article may be instituted within a period.

of five years from the date on which the publication of the registration in the Gazette becomes effective, with the exception of actions under subparagraphs I and V, which may be instituted at any time, and under subparagraph II, which may be exercised within a period of three years.

– The registration shall lapse in the following cases:

• I. When it is not renewed as provided in this Law;

• II.  When  the  mark  ceases  to  be  used  during  the  three  years immediately prior to the request for an administrative declaration of lapse, except where there are reasons for the non-use that are justified in the opinion of the Institute. (non-use cancellation action).

– There shall be grounds for cancellation of the registration of a mark if its owner has caused or condoned its transformation into a generic name denoting one or more of the products or services for which it was registered in such a way that, in the commercial circles and in the course of its generalized use by the public, the mark has lost its distinctive character as a means of distinguishing the product or service to which it is applied.

– The owner of a registered mark may at any time, in writing, request the cancellation of   the   registration   thereof.   The   Institute   may   require authentication of the signature on the request in the cases provided for in the regulations under this Law. (Voluntary Cancellation)

16. What is the term of registration and can a registration be renewed early without shortening the terms of registration?

The term of all registered trademarks is of 10 years counted since the filing date.

Our legislation permits to file renewals, six months before and six months after the expiration date of a trademark registration.

17. Please set out the renewal requirements for renewing a registration setting out the procedure

Renewal  of  the  registration of  a  mark  shall  be  requested through  a  renewal application  sheet.  Such  procedure  will  proceed  only  if  the  person  concerned submits proof of payment of the appropriate fees and makes a sworn statement in writing attesting his use of the mark on at least one of the goods or services to which it is applied, such use without being interrupted, for a period equal to or longer than three years after the issuance date of the trademark registration.

18. Is proof of use of the mark required to be filed on renewal?

Nowadays, declarations of use are not compulsory in Mexico; nonetheless, we still recommend filing the same to our clients.

Taking the above into consideration, it is not a requirement to file a declaration of use at the time a trademark is being renewed, however, when a renewal petition is filed, the Authority assumes that such trademark has been in use within Mexican territory at least for the last three years. The sole problem the owner of trademarks will face if their trademarks are renewed without use is that they will vulnerable for a non-use cancellation action filed by a third party.

In  such  regard,  our  recommendation  is  to  file  a  new  application,  instead  of  filing  a trademark renewal. This will give our clients enough time (three more years), to start using its trademark within Mexican territory and avoid a third party to contest the client’s registration.

19. Is it possible to file later renewal?

Yes, within the six month grace period provided by our legislation.

20. What are the requirements for maintenance of a registration in your country?

That is, is it necessary during the life of a registration, to file any proof of use to maintain the registration?

The mark shall be used on national territory in the form in which it was registered or with only some modifications that do not alter its distinctive character.

However, it is important to know that nowadays, declarations of use are not compulsory in Mexico; nonetheless, we still recommend filing every three years a declaration of use to our clients.

This declarations are brief writs, in which we inform the Authority that the mark has been   used  for  the  last  three  consecutive  years,  knowing  since  the  filing,  that  this declaration will not prove the use of the mark, and will not avoid a third party to contest a registration based on a non use cancellation action.

Notwithstanding the above, we still recommend this procedure for two reasons:

• Since we believe that if a third party wishes to file a non use cancellation action and at the moment they obtain an official report of the corresponding mark, they may be persuaded that the marks are effectively in use, and in case they want to file a non use cancellation action, they will need to conduct an investigation of use that will bring further costs for the contesting party.

• To have the client familiarized with the concept of use in Mexico, since every three years we will be reminding our clients that the marks need to be use and that a declaration should be filed.

21. Are there marking requirements in your jurisdiction?

Yes.

22. If so, what is the appropriate wording for any notice as to the registration?

•   Marca registrada

•   M.R.

•   ®

23. What is the effect of using the notice and is it forbidden to make a false claim of registration?

If a registered trademark owner does not use the notices of registration, it will not be able to demand damages before a civil law court.

If false claim of registration is made, the person who uses the same shall be compelled to pay finance for the false declaration.

24. Can the ® be used to notify that a mark is registered?

Yes.

25. Please describe the procedure for the proper licensing of trademarks

All licenses must be registered before the Mexican Trademark Office to be effective visa-a-vis-a-vi third parties. The request for registration may be filed by any of the parties.

Applications shall be filed within the TMO and shall comply with the following requirements:

• They shall be duly signed on each copy.

• They shall be filed on the official printed forms approved by the Institute and published in the “Diario Oficial” and in the Gazette, in the duly prescribed number of copies and annexes, which shall be filed in due form and, if they are on magnetic carriers, in conformity with the guide issued by the Institute for the purpose.

• Annexes shall be included, and they shall be legible and typewritten or printed or their contents recorded by any other means;

• An address on the national territory shall be given for hearing and receiving notifications.

• The number of the application, registration, the publication, statement or record and the date of receipt referred to shall be mentioned.

• Proof of payment of the prescribed fee shall be included.

• The appropriate Spanish translation of documents in other languages that are submitted with the application or submission shall be included.

• Documents provided the status of successors in title and the legal capacity of representatives or agents shall be included.

• Documents from abroad shall be authenticated where appropriate.

The request for registration of a license for use in respect of any industrial property right, in addition to meeting the abovementioned requirements, shall specify:

• The names, designations or business styles, nationalities and addresses of the licensor and the licensee.

• The term of the agreement.

• Whether the agreement accords the licensor or authorized user the right to bring legal action for the protection of the industrial property rights to which it relates.

• The goods or services for which the license is granted.

• The application shall be accompanied by a copy, either certified or with handwritten signatures, of the agreement evidencing the license or authorization of use. The copy submitted may omit the contractual clauses referring to royalties and other remuneration payable by the licensee or authorized user, those that refer to confidential information and methods or means of distribution and marketing of the goods and services concerned, and also any annexes containing technical information that may form part of the said agreement.

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