Strengthening your hand - Uhthoff

Strengthening your hand

Securing trademark registration generally entitles rights holders to enforce their rights against third parties and pursue legal actions that would otherwise be unavailable

Mexican trademark law contains a series of requirements that must be met in order for the competent authority to grant registration of a mark. In order to avoid any objection by the Trademark Office, which would delay the corresponding registration, an applicant should review the relevant legal requirements, to ensure that they have been fulfilled.

Article 89 of the Trademark Law establishes that the following are eligible for registration as trademarks:

• words and graphics that are sufficiently distinctive and capable of identifying the goods or services to which they are applied or are intended to be applied, compared with others of the same type or class;

• three-dimensional designs;

• trade names and corporate or business names; and

• the name of a person, provided that it is not  identical to a prior registered trademark or published trade name.

A distinctive sign should distinguish the relevant goods and/or services from others of the same type or category on the Mexican market.

As in other jurisdictions, the law establishes that a trademark shall be registered in relation to specific goods and/ or services under the Nice Classification. Such descriptions should be as accurate as possible and should not include vague phrases or words, which could lead to objections that will delay the registration process. Mexico is not a multi-class country; therefore, an applicant must file separate applications if it wishes to secure registration for the same mark in different classes.

In the past, it was assumed that for a trademark application filed according to the Nice Classification, every product or service covered within a specific class was protected; however, at the end of 2012 the Mexican Trademark Office issued an announcement, mentioning that class headings no longer cover every product or service contained in a specific class.

Consequently, it is important for all applicants to be accurate in their descriptions of goods and services; otherwise, the Trademark Office will object to the registration of the applied-for mark and request more information from the applicant. In addition, descriptions including phrases such as ‘parts thereof’, ‘accessories of the aforesaid goods’ or ‘etcetera’ are no longer accepted by the Trademark Office; hence, a specific and detailed list of all goods to be protected should be provided in order to avoid any objection.

Moreover, Mexico is a first-to-file jurisdiction, meaning that trademark rights are derived from registration, not use. An applicant is not obliged to prove use of the mark in order to secure registration; exclusive rights over a distinctive sign are granted when registration is issued.

Before filing an application with the Trademark Office, it is important to ascertain whether the applied-for mark has been used in Mexico. As already mentioned, there is no need to prove use in order to obtain registration. However, proof of use will serve to:

• backdate the exclusive rights over a trademark to the date claimed as that of first use; and

• combat an objection based on a prior trademark registration, in case there has been prior use in Mexico pre-dating the filing date of the cited anticipatory reference, or the date of first use claimed by the owner of the anticipatory reference.

The statutory term of a prior-use cancellation action is three years from the date of publication in the Trademark Office Gazette.

Mexican legislation stipulates that a date of first use should be claimed at the time that an application is filed, since it cannot subsequently be modified. If a trademark application was filed without claiming a date of first use, but the mark has been used in Mexico, amendments will not be possible. In the absence of any information, it shall be presumed that the mark has not been used.

Once a trademark application is filed, the Mexican Trademark Office will conduct two types of examination:

• Formal – the Trademark Office will check that all formal requirements have been met and that the descriptions of goods or services are accurate and clear. In the past, it was compulsory to file a power of attorney in order to prove legal representation by a Mexican agent; however, this is no longer the case.

Since the Trademark Office can request a Mexican agent to provide evidence of its legal representation, it is advisable for all IP agents to keep this document on file. In addition, it also used to be compulsory to provide a certified copyof the priority document of any claimed priority rights within three months of the filing date of the trademark application; this is no longer necessary.

• Novelty – the examiner will study the registrability of a trademark – that is, whether the applied-for mark complies with legal requirements (i.e., distinctiveness), and whether there are any prior rights which may impede registration.

If no impediments are subsequently withdrawn, the Trademark Office will grant registration of the applied-for trademark. A trademark registration is valid in Mexico for 10 years.

In order to avoid unnecessary official actions, at the application filing stage, applicants should:

• Conduct a trademark search to uncover any confusingly similar trademark registrations or applications that could impede registration of the applied-for trademark. Decisions concerning the similarity of two or more trademarks will depend on the examiner’s subjective criteria; the examiner may consider there to be no similarity between the trademarks, or may consider that the similarity is not severe enough to cause confusion. Nevertheless, a trademark search will assist applicants in establishing scenarios that they may face. If the results of such a search indicate that the mark has little success of securing registration, an applicant can decide either to modify or to substitute the mark.

• Conduct a distinctiveness evaluation based on local law and practice in order to discover whether the applied-for mark will be opposed based on descriptiveness issues or non-distinctiveness. The Trademark Office has a set of narrow criteria concerning distinctiveness, since it often considers suggestive trademarks to be descriptive. Therefore, if an official action opposing the registration of a suggestive trademark is issued based on lack of distinctiveness, arguments asserting its registration could prove fruitful.

• Provide an accurate, clear and specific description of goods or services in order to avoid unnecessary requirements and objections by the Trademark Office. It is advisable that all descriptions align with, or be as similar as possible to, phrases used in the Nice Classification. Obviously, the Nice Classification cannot possibly include all existing goods and services; however, equivalent terms can be used to describe the subject of trademark protection.

• Carefully review and respond in a timely manner to any official actions in order to avoid delays during the registration procedure. Mexican legislation grants a two-month term (plus a two-month extension) in which to file a response to an official action and overcome the objections raised.

Securing trademark registration will entitle the rights holder to enforce its rights against third parties and pursue legal actions that would be unavailable in the absence of a valid trademark registration (with the exception of those scenarios mentioned above).

image005 Uhthoffimage005 Uhthoff

Carolina Ponce

Associate

cponce@uhthoff.com.mx

Carolina Ponce is an associate at trademark specialist firm Uhthoff, Gomez Vega & Uhthoff SC. She holds a law degree from the Universidad Iberoamericana, Faculty of Law, 2008 and is a member of the Mexican Association for the Protection of Intellectual Property and the International Trademark Association. Ms Ponce is fluent in Spanish, English and  French.

 

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