Trademarks in Mexico – More amendments to the Industrial Property Law

Dear Colleagues,

In our previous post we informed about amendments to the Industrial Property Law for
patents, utility models and industrial designs.

Recently, the trademark regulations were substantially amended. Such changes were
published in the Federal Official Journal on May 18, 2018 and will be in force on August
10, 2018.

These amendments were necessary to expand protection of trademarks in Mexico and
now allow the protection of non traditional trademarks such as sound marks, scent
trademarks and holograms.

Trade dress will also be protected covering operative elements and image elements
including size, design, color, appearance of the shape, label, packaging, decoration or
any other combination that distinguishes products or services.

Another relevant amendment is the inclusion of secondary meaning (acquired
distinctivness derived from use) to overcome some of the objections established in the
trademark section of the Industrial Property Law.

Moreover, bad faith is introduced as an objection for the registration of a trademark. Bad
faith is defined as a situation where registration of a trademark is requested against the
good practices, uses or customs of the Industrial Property System, commerce and
industry, or when an improper benefit or advantage is sought.

Bad faith is also introduced as a ground for the invalidation of a trademark registration.
Such action may be executed at any time.

One more advantage of the amendments is the regulation of consent letters (coexistence
agreements) to overcome objections regarding likelihood of confusion. This was a
necessary amendment after the issuance of some judicial precedents which did not
recognize these kind of agreements due to lack of regulation.

It is important to mention a new obligation for registrants since declaration of real and
effective use will be necessary to avoid the lapse of a trademark registration. Such
declaration must be submitted within 3 months after the anniversary of three years of
registration.

Such declaration of real and effective use must also be done when a trademark is
renewed.

Moreover, the opposition system which was introduced a few years ago was improved to
specify which evidence is allowed in such procedure and to allow the filing of closing
arguments. The opposition procedure will not suspend the prosecution of a trademark
application and it will not prejudge the outcome of the substantive examination.

Another relevant amendment is the extension of the deadline for executing the
cancellation of a trademark on the grounds of previous use. As some of you may recall,
the deadline was of 3 years but with the modifications it is extended to 5 years. This is a
good change since the deadline of 3 years was always considered short by clients and
colleagues.

Last but not least, certification trademarks were introduced and the declaration of well
known or famous trademark may be obtained without a previous registration in Mexico.

Please contact us if you have any questions.

Kind regards,

Aarón Estrada



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