In most civil-law countries, the publisher of a newspaper, magazine or journal may secure exclusivity rights in the publication’s name by obtaining a trademark registration. It does not work like that in Mexico.

Mexican law provides two parallel systems to obtain exclusivity rights in the name or title of a journal, magazine or newspaper. On the one hand there is the trademark system. The entity in charge of registering trademarks is the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO).

The other system is the reserva de derechos. The reserva is a special registration for names of magazines, journals and newspapers provided in the Federal Copyright Law and issued by the Instituto Nacional del Derecho de Autor or Mexican Copyright Office (MCO).

Practically speaking, the reserva de derechos and the registered trademark provide virtually identical proprietary rights in the registered mark or reserved name. Therefore, conflicts between trademark and reserva holders are not unusual.

From a teleological point of view, there is no justification for the existence of two parallel systems. Most Mexican practitioners believe that all the provisions regarding the reserva de derechos applied to the name of a journal, magazine or newspaper should be derogated; however, this issue apparently is not in the agenda of the Mexican federal Congress.

There are advantages and disadvantages of owning a reserva de derechos instead of a trademark for the name of a magazine or newspaper.

Advantages of the reserva de derechos

(1) A conflicting trademark registration to identify magazines, journals or newspapers may be invalidated if there is an earlier reserva de derechos for an identical or confusingly similar name. An earlier registered trademark does not provide grounds to cancel a later reserva de derechos.

(2) An earlier and continuous user of a name applied to a magazine or journal may cancel a reserva de derechos for that same name or a confusingly similar one, but only if the said use took place in Mexico, while a Mexican trademark registration may be cancelled due to earlier use in Mexico or abroad (provided that the action is filed within the time limits provided by the statute of limitations).

(3) All documents recorded with the Mexican Patent and Trademark Office regarding pending trademark applications and trademark registrations become part of public records. The records of reservas de derechos are kept confidential; unless there is an order from a court or consent from the reserva holder, third parties may not review the official records or obtain copies.

(4) In the case of a successful infringement action due to the unauthorized use of a name protected by a reserva de derechos, the minimum fine provided in the statute for the infringer is much higher than the minimum fine stipulated for the trademark infringer.

(5) The Secretaría de Gobernación or Ministry of the Interior has a sort of censorship office that has authority to issue two special certificates named certificado de licitud de título and certificado de licitud de contenido. These certificates are not a source of intellectual property rights and do not provide exclusive rights; they only certify that the title and the general content of the magazine do not infringe public order.

Arguably, all magazines and journals distributed in Mexico must have the certifications of the Ministry of the Interior, and only the holder of a reserva de derechos is allowed to apply for the certificates issued by the Ministry of the Interior.

(6) The Mexican Mail Service provides a preferential fee for magazines and journals, if they have a reserva de derechos and the certificates issued by the Ministry of the Interior.

Disadvantages of the reserva de derechos

(1) The main disadvantage of the reserva is that it has to be renewed yearly, significantly increasing the maintenance cost in the medium and long terms.

(2) For a registered trademark, it is sufficient to file a statement under oath, stating that the use of the registered trademark has not been interrupted in Mexico for three consecutive years or more to renew the registration. In the case of the reserva it is also necessary to file a sample of the magazine or publication identified with the reserva (issued within the twelve months prior to the renewal due date).

(3) The trademark owner has a twelve-months window to renew the trademark. The window to renew the reserva holder is only two months.

(4) Reserva searches are available from the MCO, but the MCO takes about three weeks to provide the results. There is no on-line database of the reservas de derechos.

(5) If an applicant files an application for a reserva de derechos and the MCO decides that there is an earlier reserva issued or applied for a confusingly similar name, instead of issuing an office action citing the anticipation and allowing the applicant to argue in favour of its application, the MCO may reject it. The rejection of the MCO may be appealed to the Federal Court of Tax and Administrative Affairs.

In an ideal scenario, the publisher of a magazine, newspaper or journal should have both a trademark registration in class 16 and a reserva de derechos.

If budget constraints force the publisher to choose between the two, as a general rule, I would suggest the reserva de derechos; it provides more solid exclusivity rights on the reserved name, although foreign publishers and IP counsels may feel uncomfortable by choosing a reserva instead of a trademark, given the lack of familiarity with the reserva.