LEGAL FRAMEWORK
Domestic law
1. What is the primary legislation governing trademarks in your
jurisdiction? These are:
• the Law of Industrial Property; Federal Law for the Protection of
Industrial Property, as of 5 November 2020;
• the Federal Law for Administrative Procedures;
• the Federal Law of Contentious Administrative Procedures; and
• the Federal Code of Civil Procedures.
International law
2. Which international trademark agreements has your
jurisdiction signed? These are:
• the Paris Convention for the Protection of Industrial Property;
• the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks;
• the Nice Agreement Concerning the International Classification
of Goods and Services for the Purposes of the Registration of
Marks; and
• the Agreement on Trade-Related Aspects of Intellectual
Property Rights.
Regulators
3. Which government bodies regulate trademark law?
These are:
• the Mexican Institute of Industrial Property;
• the Federal Court of Administrative Justice;
• the Administrative Circuit Courts; and
• the General Prosecutor’s Office.
REGISTRATION AND USE
Ownership of marks
4. Who may apply for registration?
According to the Mexican Law of Industrial Property, trademark registrations may be applied for by any individual and companies wanting to distinguish products or services.
Scope of trademark
5. What may and may not be protected and registered as a
trademark?
In Mexico, trademark protection is granted to any sign that is perceivable
by the senses, represented in a clear and precise manner that is capable
of distinguishing products and services from others in the market.
Mexican law grants protection for non-traditional marks; specifically, for
sounds, scents, motions, colours and product design or configurations.
Likewise, protection for certification marks is available in Mexico.
Unregistered trademarks
6. 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 possibility of opposing use performed in Mexico as an exception against an
infringement action, 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.
The only exception to this general rule corresponds to notorious
and famous marks, which may be enforced without a registration,
provided that suitable and sufficient evidence demonstrating such privileged status is exhibited.
Famous foreign trademarks
7. 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?
Famous foreign marks may be protected provided that they demonstrate that they are known by Mexican consumers.
The benefits of registration
8. What are the benefits of registration?
While there are some exceptions provided in Mexican law where unregistered marks may be enforced, in general terms, only registered marks may be opposed against third parties by means of cancellation, infringement or criminal actions. Also, only registered marks may be used as grounds of opposition.
Filing procedure and documentation
9. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
The only document that needs to be submitted is an application form. No
power of attorney needs to be filed; however, a power of attorney needs
to be granted by the filing date. Documents supporting claimed priority
rights no longer need to be exhibited.
Electronic trademark filing is available with a 10 per cent discount
granted by the government for online filing. To date, only an individual
holding an electronic signature and bank account or credit card recorded
before the Mexican tax authorities may sign an electronic application.
Trademark searches are available online, although caution is
recommended, because the database may not be entirely up to date.
Registration time frame and cost
10. How long does it typically take, and how much does it
typically cost, to obtain a trademark registration? When does
registration formally come into effect? What circumstances
would increase the estimated time and cost of filing a
trademark application and receiving a registration?
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. Nowadays, electronic filing of trademark applications is available. This type of application may in some cases be assessed in a more
expeditious manner.
Regarding designations deriving from an international registration,
the Mexican Institute of Industrial Property has up to 18 months to issue
its first decision or letter. Generally, the examiners are taking advantage
of this extended deadline.
The official fee for the study, revision and issuance of a certificate
of registration is 3,126.41 Mexican pesos. If the application is filed online,
the government grants a 10 per cent discount.
If the application is objected to by the Mexican Institute of Industrial
Property, then delays in obtaining 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 that official actions are issued, additional official fees
will have to be paid in the amount of between 377.89 Mexican pesos and
755.78 Mexican pesos per requirement or objection.
To file a trademark application, the following are required:
• the word or phrase to be registered and a black and white or colour
specimen in the case of designed or combined marks; if dealing
with applications for sounds, scents and product configurations,
in light of the recent amendments, the applicant should provide a
description of the mark to be protected;
• the law does not require the exhibition of the document upon which
priority is claimed. Thus, to claim priority rights, it is only necessary
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 must be executed by an
authorised officer of the applicant company and by two witnesses.
The 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.
Moreover, the recently enacted Federal Law for the Protection
of Industrial Property expressly provides that a registration shall be
cancelled if the registrant in a cancellation proceeding does not demonstrate that the date stated as first use in the application form is accurate.
Registrations come into effect once the certificate is issued and
published in the Official Gazette.
Classification system
11. 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 multiclass applications available and what are the estimated cost
savings?
Mexico follows the International Classification of Goods and Services
under the 11th edition of the Nice Agreement.
However, it is very important to verify the drafting of goods and
services, because examiners tend to be 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. The Federal Law for the Protection of Industrial
Property is not clear on whether multi-class applications will be
accepted, and we thus expect to have further clarification when the
corresponding administrative regulation is issued.
Another issue to be taken into account is that, according to Mexican
law, goods and services to be covered must be specified.
Examination procedure
12. What procedure does the trademark office follow when
determining whether to grant a registration? Are applications
examined for potential conflicts with other trademarks? Are
letters of consent accepted to overcome an objection based
on a third-party mark? May applicants respond to rejections
by the trademark office?
Trademark applications are subject to two different types of examination. 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 owing to its nature
(absolute grounds) or in light of pre-existing registered marks or
pending applications (relative grounds).
Applicants have a two-month term, counted from the date in which
they are served with the official action, to respond to any objection with
the possibility of obtaining two extensions of one month each time.
The extensions do not need to be applied for because they operate
automatically provided that the corresponding fees of approximately
377 Mexican pesos per month are paid in a timely fashion.
However, according to the new Federal Law for the Protection of
Industrial Property, examiners will now issue a single official letter
containing the formal requirements and objections upon relative and
absolute grounds. Likewise, if any oppositions are filed, the corresponding notification will be made in the same official letter. The applicant will still have a two-month term, subject to a two-month
extension, to address all the requirements and objections made by the
examiner and to respond to any opposition, if filed.
Traditionally, the Mexican Institute of Industrial Property disregarded documents of consent and coexistence agreements, arguing
that besides having the obligation to protect the rights of brand owners,
they had to protect consumers from being led into confusion or error
when finding to identical or confusingly similar marks for identical or
similar goods and services. However, owing to an amendment of the
law, the Mexican Institute of Industrial Property must accept documents
of consent when dealing with confusingly similar marks.
Use of a trademark and registration
13. 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. Mexican law expressly states that the date of first use
should refer to Mexican territory. If no date of first use is claimed, then
it will be understood that the mark has not been used.
In Mexico, trademarks may be registered even if their use has not
commenced.
The ownership of a foreign registration does not grant any right
of priority on behalf of the applicant except that provided by the Paris
Convention.
Mexican law does not expressly provide the time in which use of a
mark must begin. However, registrants will have to file a declaration of
use within the three-month period following the third anniversary of the
corresponding registration. If said declaration is not filed, the registration will automatically lapse.
Markings
14. 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 is mandatory to be able to enforce infringement actions or
to claim damages. The symbol ®, the letters MR or the term Marca
Registrada (registered trademark) are allowed. The use of the term ™ is
not recognised as the adoption of a mark. If marking has not been made,
Mexican law allows for the amendment of such circumstance by demonstrating that the brand owner has publicly announced that the mark is registered by, for example, placing an advertisement in a newspaper.
Appealing a denied application
15. Is there an appeal process if the application is denied?
The decision to deny an application may be challenged either by means
of 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
chamber for intellectual property matters.
Third-party opposition
16. 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 Mexican law, applications should be published for opposition purposes within a 10-working-day period, counted from the date of
filing. The deadline to file an opposition is one month following the date
of publication. This deadline is non-extendable. The Mexican Institute of
Industrial Property publishes listings detailing the trademark applications that have been opposed. Upon the corresponding publication, an
applicant has a one-month term in order to file its response to set out
the grounds of opposition.
Once the term granted to the applicant to respond to the opposition
expires, the authority will grant two days for both parties to submit their
final allegations. This term has been extended to five days according to
the recently enacted Federal Law for the Protection of Industrial Property.
Oppositions may be filed on the grounds of bad faith; namely, in
those cases where the marks are applied for against good practice or
when the applicant intends to obtain a benefit against the interests of the
rightful owner of the corresponding mark.
The grounds for opposition are not limited to pre-existing rights,
but include other absolute grounds, such as the descriptiveness of a
proposed mark.
The opposition process as outlined in law does not suspend or
interrupt the registration process and thus should not delay the study
and ruling of trademark applications.
The examiners still carry out the formal and novelty exams and thus
are able to object to applications on both relative and absolute grounds.
Once the registration process is concluded, the examiner will determine whether the application should be granted into registration, in
which case the certificate of registration will be issued.
Aside from the opposition system, it is still possible to expunge a
trademark registration 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 claim 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 recently enacted Federal Law for the
Protection of Industrial Property expressly provides that a registration shall be cancelled if the registrant in a cancellation proceeding
does not demonstrate that the date stated as first use in the application form is accurate);
• the registration should not have been granted in light of a preexisting 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 oppositions and 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 the utmost importance to work closely with counsel to
come up with a time and cost-effective strategy.
Duration and maintenance of registration
17. 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, with the possibility of filing subsequent renewals for 10 years.
Under the current regime, the 10 years are counted from the filing date
of the corresponding application. However, for registrations granted
under the recently enacted Federal Law for the Protection of Industrial
Property, the 10-year period will be counted from the granting date of
the registration.
An important issue to take into account is that, at present,
declarations are compulsory, whereby they have to be filed over two
different moments:
• within the three-month window following the third anniversary of
a registration; and
• together with renewal petitions.
If the third anniversary declaration of use is not filed, the corresponding
registration will automatically lapse. The official fee regarding the
commented declaration of use is 1,143.38 Mexican pesos.
While Mexican legislation does not provide a guideline on the use
that suffices to defend a registration (eg, if token use is enough), the
law’s administrative regulation states that the use of a mark should
be performed in accordance with the practices of the relevant market.
Under the provisions of the new Federal Law for the Protection
of Industrial Property, the protection of a registration will be limited to
those goods and services in connection with which the declaration of
effective use is submitted.
Surrender
18. What is the procedure for surrendering a trademark
registration?
To surrender a trademark registration, the owner must file a voluntary
cancelation petition. While not provided in the Industrial Property Law,
if the petition is filed on behalf of registrant, it is advisable to exhibit a
suitable power of attorney where it is clearly stated that the proxy is
appointed to cancel registrations, otherwise the examiner may issue a
requirement to that effect.
Related IP rights
19. Can trademarks be protected under other IP rights (eg,
copyright or designs)?
Designs and sound marks may be protected through copyright.
Sometimes, trade dress may also be protected as copyrighted work.
Nevertheless, copyright protection has a certain duration and, in any
event, requires the existence of an individual to be recognised as
the author.
Trademarks online and domain names
20. What regime governs the protection of trademarks online and
domain names?
Online trademark and domain name protection may be sought through
the Industrial Property Law since there is no specific legislation.
However, to cancel domain names, it is necessary to file a domain name
dispute, either before the local register (.mx) or before ICANN (.com).
Other useful tools brand owners should consider are the takedown
processes provided by social media administrators.
LICENSING AND ASSIGNMENT
Licences
21. May a licence be recorded against a mark in the jurisdiction?
How? Are there any benefits to doing so or detriments to
not doing so? What provisions are typically included in a
licensing agreement (eg, quality control clauses)?
According to the current domestic legislation, licence agreements
must be recorded before the Mexican Institute of Industrial Property 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
preferential 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 it has
considered that international treaties have the same constitutional
rank as domestic law; therefore, there are many judgments that have
recognised controlled use in light of the North American Free Trade
Agreement or the Agreement on Trade-Related Aspects of Intellectual
Property Rights.
The licence agreement must clearly state the duration of the licence
as well as the goods or services in connection with which the authorisation for its use is granted. Additionally, it should be stated whether a
licensee will be authorised to take legal action against infringing third
parties. If no mention to this regard is made, then it will be understood
that the licensor grants such authorisation.
In the recently enacted Federal Law for the Protection of Industrial
Property, it is stated that licence agreements may be recorded, thus
establishing their effects even against third parties that are not subject
to said recordal.
Also in said amendment, an additional ground to cancel the
recordal of a licence agreement has been included: upon the date of
termination of the agreement.
Assignment
22. What can be assigned?
Rights derived from trademark applications and registrations may
be assigned.
While the Mexican Institute of Industrial Property has maintained
that benefits derived from the use of a mark and, in turn, goodwill was
not transferred in an assignment, there are some judicial precedents
where this criterion has been reversed.
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
pertain 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 the marks should be included in the assignment document.
Assignment documentation
23. What documents are required for assignment and what form
must they take? What procedures apply?
To record an assignment, an original document of assignment – preferably depicting the involved registrations, or a duly certified and
legalised copy – should be submitted with a completed form. All documents drafted in languages other than Spanish should be accompanied
by a translation. The translation does not need to be certified.
Once the petition to record an assignment is submitted, the examiner will review the exhibited documents as well as the trademark
database to make sure no linked marks have been left out of the assignment. By linked marks, Mexican law provides for all applications or
registrations for the same or a confusingly similar mark covering identical or similar goods.
Validity of assignment
24. Must the assignment be recorded for purposes of its validity?
The assignment of a mark must be recorded for it to produce legal
effects against third parties.
Security interests
25. 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
security interest should be recorded before the Mexican Institute of
Industrial Property to produce legal effects against third parties.
To proceed with such a recordal, an original document or a certified
and legalised copy thereto must be exhibited together with the corresponding translation into Spanish, if applicable.
An important change in the recently enacted Federal Law for the
Protection of Industrial Property is that the law now recognises the
right of the party whose interest is being secured with the mark to file
for the corresponding renewal petition, without it being necessary to
declare use of the mark.
ENFORCEMENT
Trademark enforcement proceedings
26. 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
commercialisation of counterfeit goods are activities that constitute
felonies that may be pursued by means of criminal actions before the
Federal Prosecutor’s Office.
Procedural format and timing
27. 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. Together 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 witness 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 to file its
responsive brief and supporting evidence.
According to Mexican procedural law, the plaintiff has a three-day
term to rebut the exceptions and evidence submitted by the alleged
infringer.
Thereafter, the Institute will grant both parties a five to 10-day term
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
submitted by the parties.
Burden of proof
28. What is the burden of proof to establish infringement or
dilution?
As a general rule, it is the 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
demonstrate the facts upon which exceptions are opposed (eg, the existence of a parallel imports status for the infringing goods).
Standing
29. 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.
Border enforcement and foreign activities
30. What border enforcement measures are available to halt the
import and export of infringing goods? Can activities that take
place outside the country of registration support a charge of
infringement or dilution?
Only activities performed within the Mexican territory may be alleged
as infringing conduct as the legal effects of trademark registrations are
limited to Mexico.
According to current legislation, it is possible to record trademarks at the Customs Trademark Database. This database has a dual
purpose of speeding inspection and clearance procedures of registered
importers, licensees, etc, and, at the same time, improving inspection
procedures intended to detect counterfeit and IP-infringing merchandise while also establishing reliable information channels to alert owners or rights holders, enabling them to produce the relevant legal
actions to protect their trademark rights as early as possible.
According to such database, customs agencies are able to effectively detect the importation of infringing or counterfeited goods and
provide much-needed support for the competent government agencies (the Mexican Institute of Industrial Property and the General
Prosecutor’s Office) to act in these matters, because the custom authorities may only take action by means of an order issued by either one of
those agencies or a judge.
Discovery
31. What discovery or 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 or regulate discovery as it is
understood in other jurisdictions.
However, a particular provision in the Law of Industrial Property
provides 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.
Timing
32. 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 is 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.
Limitation period
33. What is the limitation period for filing an infringement action?
According to Mexican law, there is no limitation period for filing an
infringement action. However, there is a statute of limitation of two years
to claim damages that must be taken into account because to make
such a claim upon trademark rights, brand owners must first obtain
a decision from the Mexican Institute of Industrial Property stating an
infringement has existed.
According to the recently enacted Federal Law for the Protection
of Industrial Property, the registrant may claim damages directly before
the Federal Court, for which purpose the two-year term should still be
considered.
Litigation costs
34. 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 provisional measures are requested. Thus, a bond must be
submitted if the alleged infringer appears before the Mexican Institute
of Industrial Property 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.
Therefore, it is important to work closely with counsel to come up
with a time- and cost-effective strategy.
Appeals
35. 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 same Institute
or by means of a nullity action before the Federal Court of Fiscal and
Administrative Justice, which has a chamber specialising in intellectual
property matters.
Thereafter, the decisions rendered by the Federal Court may be
contested by means of a judicial appeal (amparo) that has to be filed
before a circuit court.
Defences
36. 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 alleged infringer could challenge the validity of
a trademark registration or oppose its name or corporate name if the
same was adopted prior to the filing date of the registered mark or the
one stated as of first use.
Remedies
37. 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
equivalent 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.
In the recently enacted Federal Law for the Protection of Industrial
Property, the possibility of claiming, calculating and awarding damages
before the Mexican Institute of Industrial Property has been included.
Also, the option of claiming damages directly before the Federal Court,
without needing a prior declaration of infringement, will be available
under the new law.
ADR
38. 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
enforceable beyond the association’s sphere and thus would not have
legal effect.
Moreover, to be able to claim damages it is essential to obtain a
decision from the Mexican Institute of Industrial Property declaring the
existence of the alleged infringements.
UPDATE AND TRENDS
Key developments of the past year
39. Are there any emerging trends, notable court rulings, or hot
topics in the law of trademark infringement or dilution in your
jurisdiction?
On 1 July 2020, the Federal Law for the Protection of Industrial Property
was enacted. This law will come into effect on 11 November 2020. As a
consequence, the Law of Industrial Property that has been in force since
1991 will be repealed. Some of the highlights of the new legislation are
as follows:
• partial cancellation actions will be available against those registrations granted in accordance with the new law;
• the validity of trademark registrations will now be counted from
the date on which the registration is granted;
• failure to demonstrate the veracity of the date of first use claimed
in the application form is established as a ground for cancellation;
• it is confirmed that the three-year declaration of use is compulsory
only for those marks granted after 10 August 2018;
• the prohibition of the registrability of marks that are considered
against morals or good manners has been eliminated;
• ‘positioned trademarks’ may now be considered as recognised,
since the new law allows holders to indicate with pointed lines the
elements that are not to be considered part of the trademark;
• if an opposition is dismissed, the interested party may not bring a
cancellation action upon the same grounds that were used in the
opposition procedure;
• the possibility of detaining goods at the border has now been
expressly recognised in connection with products to be imported,
exported or in transit;
• the authority will be able to adopt provisional measures ex officio
and in some cases it is established that alleged infringers will not
be able to request the release of those measures;
• it is now expressly provided that the cancellation of a registration
has the effect of destroying its effects to the date on which it was
applied for; in other words, for legal purposes it will be as if the
registration had never existed. As an exception to this new rule,
when a registration is cancelled upon lack of use, its effect will only
be destroyed as from the date on which the decision cancelling the
registration becomes final; and
• damages may be claimed, calculated and awarded before the
Mexican Institute of Industrial Property when initiating an infringement proceeding, or directly claimed before the Federal Court.
Coronavirus
40. What emergency legislation, relief programmes and other
initiatives specific to your practice area has your state
implemented to address the pandemic? Have any existing
government programmes, laws or regulations been amended
to address these concerns? What best practices are advisable
for clients?
The Mexican government has not implemented any particular
programmes for industrial property in light of the pandemic.
However, during lockdown, the Mexican Institute of Industrial
Property implemented several electronic tools that allowed the filing of
all trademark-related petitions online, which allowed brand owners to
file applications, maintain their registrations, file oppositions and update
ownership data.