The marking of products or services that use industrial property rights (such as patents or registered trademarks) to make third parties aware of the existence of such intangible assets, provides the right holders with certain benefits. Techincally speaking, the marking is not an actual obligation and failure to mark a product is not illegal, unless there were a contract stating that the user or the industrial property right (i.e. a license) must mark the products or services.

Marking a product with the indication of an industrial property right may prevent or discourage third parties from infringing the intellectual property right associated to a product or service. If, in spite of the marking, a third party infringes the patent or trademark right, the measures available for the right holder are also stronger and the penalties to the infringer higher.

There are certain rules about the marking of products provided in the Mexican statute:

1. The use of the symbol ®, the abbreviation M.R. or the expression “Marca Registrada” (Registered Trademark), “patente en trámite” (patent pending) or “patentado” (patented) may only be used if the trademark is registered in Mexico of there is a patent application or issued patent in Mexico.

The use of any of the aforementioned indications without a Mexican trademark registration, patent or patent application is illegal (actually, it is a cause of infringement), and the Mexican Patent and Trademark Office may impose a fine, or in extreme cases, order the closure of the infringing premises.

 There is the case of products imported into Mexico that use the symbol ® because the trademark is registered in the country of origin, but not in Mexico. In such case, the use of the ® in Mexico would be illegal.

The same rule is applicable to patented products. The indication about the existence of the patent or a pending application is valid only if there is a Mexican patent or patent application. It is possible to use the expression “patente pendiente” or equivalent even if the relevant Mexican patent application has not been published in our country. There is no specific symbol (equivalent to the ® for trademarks) in our country to indicate that there is a patent or pending patent application in Mexico.

2. The use of TM and SM is irrelevant in Mexico, thus it has no legal consequences.

The symbols TM and SM are used in the United States to claim common-law rights on a trademark. Mexico is a civil law country and common-law rights simply do not exist. In any case, the use of TM or SM may not replace the use of the ® symbol or its equivalents (M.R. or Marca Registrada).

3. Benefits from the use of marking associated to patents and trademarks

The use of markings to inform about the existence of a patent or registered trademark (i.e. the symbol ® or the word “patentado”) provides certain benefits stipulated in the Mexican statute:

a) Request the Mexican Patent and Trademark Office the enforcement of preliminary measures (similar to a preliminary injunction) against an infringer.

b) File a lawsuit for payment of the damages and losses that the infringer caused to the right holder.

c) File criminal charges with the General Attorney’s Office in case of forfeited products identified with the registered trademark.

d) The infringer is presumed to be a bad-faith infringer and the fine that the Mexican Patent and Trademark Office may impose would double. (2012 update. See our later post )

Failure to indicate or inform that the trademark used to distinguish a product or service is registered does not mean that the trademark owner would not be allowed to enforce the trademark rights. The proprietor or licensee may still file an administrative infringement action, but it would not be entitled to request the enforcement of preliminary measures, may not file a civil action for payment of damages and may not file charges due trademark counterfeiting.

4. Alternatives to the marking of the products and services

There are ways to cure the lack of use of the symbols or expressions provided in the statute to inform third parties about the trademak or patent rights associated to a product or service.

The Industrial Property Law allows the owner of a registered trademark or a patent or patent application to use “other means” (without further definition) to inform third parties about the IP rights. In such cases, the benefits to the right holder would be the same than if he has used the symbol ®, the legend Marca Registrada, the abbreviation “M.R.” o the words “patentado” and “patente en trámite”.

In practice, the Mexican Patent and Trademark Office has allowed the trademark and patent owners to replace the aforementioned markings with a notice published in a nationwide newspaper.

5. Some pending issues

There are several issues that the courts will need to clarify in connection to the marking of products and services.

For instance, it is unclear what would be the consequence of marking a product with terms in a language different to Spanish (i.e. Registered Mark instead of “Marca Registrada” or patented instead of “patentado”). The obvious question would be if the use of such expressions in other languages would entitle the right holder to the same benefits than if the expressions were in Spanish. The provision makes no distinction about this subject, and the fact is that there are other languages widely spoken in Mexico besides Spanish (including 62 native languages spoken by more that 10 million Mexicans).

Another unclear issue refers to the possible retroactive effect that the use of the marking or a notice published in a newspaper about a trademark or patent would have. For example, if the trademark owner would be entitled to claim damages from the period of time when, in spite of the existence of the trademark registration and a trademark infringement, the trademark owner had not announced yet the proprietary rights by any means.

6. Other signs. For those readers not familiar with intellectual property law, the symbol © and the expressions copyright, “derechos reservados” and all rights reserved are not related to patents or trademarks, but to copyright. Their use and consequences are ruled by other statutes, which I may analyze in another post.