On May 18, 2018, the Official Journal of the Federation published a large number of amendments to the Industrial Property Law (the Statute). The amendments affected substantive provisions in the field of distinctive signs, mainly trademarks. I can say that this may be the most significant reform to the Mexican trademark law of the last 25 years.

The number and relevance of the amendments are so big that I can’t refer to all of them in this post. Instead, I will briefly explain the changes that I believe are most relevant:

One very important change that I must refer right now is that the declaration of actual and effective use to maintain trademark rights in Mexico has been reinstated (see paragraph 11 below).

1. State of being in force: The amendments to the Statute will become in force on August 10, 2018.
2. Rules of the Statute: The implementation of the amendments will demand changes in the Rules of the Statute. As for today (June 17, 2018), the new Rules have not been published.
3. Protection of non-traditional Trademarks: The idea that only a visible sign could be protected as trademark is in the past. The amended Statute now explicitly provides that visible signs (including holographic figures), sounds, scents and trade-dress may be registered as trademark[1].

There is still no information about how applicants will have to describe a non-traditional trademark in the application; such information should be stipulated in the amended Rules of the Statute to be published soon (Update June 3, 2020: On September 3, 2019, the Mexican Patent and Trademark Office published the guidelines about trademark applications for non-traditional trademarks. Click here for more information.)

4. Trade-dress as Trademark. This is a delicate subject for merchants, service providers and manufacturers that rely on trade-dress to identify and distinguish their goods and services from competitors. If trade-dress is now registrable as a trademark[2], it means that Mexico will acknowledge exclusivity rights on trade-dress, but such an exclusivity right will be granted to the first filer; any other individual or entity using confusingly similar trade-dress may become an infringer. Therefore, trade-dress users should hurry to file the trademark application as soon as the amendments enter in force. 
5. New restrictions to register Trademarks. As the amendments allow a wider variety of signs to be registered as a trademark, there are new and, in some cases, clearer causes of refusal of trademark registration. There are several changes, but the ones that particularly called my attention, were the explicit prohibition to register marks filed in bad faith; words that reproduce Appeals of Origin and Geographic Designations; and words identical or confusingly similar to the title of literary or artistic works or the reproduction or imitations of elements of such works.
6. Secondary meaning. A mark that could be originally regarded as descriptive or generic mark may be registered if the applicant shows that it has developed a secondary meaning as a consequence of the use in commerce. Although this is a new provision in the Statute, the possibility of allowing the registration, as a trademark, of a descriptive or generic mark due secondary meaning was already stated in Mexican law through article 15.1 of TRIPS and some bilateral commercial treaties, as the Free Trade Treaty between Chile and Mexico[3]. 
7. Effectiveness of Coexisting Agreements. Amended article 90 of the Statute makes written agreements between trademark owners and applicants, allowing the last overcoming an anticipation, binding for the Mexican Patent and Trademark Office (MPTO), in the case of confusingly similar trademarks. If the trademarks were identical, in any aspect (phonetic, graphic or ideological), the MPTO may reject the consent and refuse the application.

The formal requirements of the agreement will be determined by the soon-to-be-issued Rules of the Statute. 

8. Certification Trademarks. Mexico will allow Certification Trademarks.
9. Description of Goods and Services. Amended article 113, paragraph IV, of the Statute, now demands applicants to state the specific goods or services to be identified with the trademark. It is not clear what the law means with “specific” although it seems that the intention is ending the practice of using the headers of the International Classes as description of products and services in the application.
10. More complex oppositions. Originally, anyone could file an opposition against a trademark application if it was filed on time and the government fee was paid. Now, opposers will have to prove legal standing.

Further, there is now a more detailed regulation about the evidence that may be filed in the opposition proceeding. 

11. Statement of use. Right-holders of trademark registrations issued on August 10, 2018, and thereafter, will have to file a statement of actual and effective use of the trademark in Mexico, and a government fee, within a three-month term counted from the third anniversary of issuance of the trademark registration (See The new statement of use of registered trademarks in Mexico).

Failure to file the statement of use would cause the ipso iure abandonment of the trademark registration.

The statement of use has to be filed only once after the third year of registration, and again simultaneously with each future renewal. 

12. More restrictive renewals. In order to renew a trademark registration, the trademark owner or the agent will have to state that there has been actual and effective use of the trademark. More important, the use of the registered trademark in one Class of goods or services will no longer benefit other registrations for an identical trademark in other Classes for renewal purposes.

Use on just one of the goods or services stated in the registration would be enough to support the renewal for all products and activities listed in the registration.

This rule will apply to all renewals filed on August 10, 2018, and thereafter, not only registrations issued after that date.

13. Additional cause of invalidation and longer term. The amendment added, as cause of invalidation of a trademark registration, the filing in bad faith of the trademark application. It is not clear yet what would be considered “bad faith” in order to make a registration vulnerable to the cause of invalidation.

The term provided in the statute of limitations to file the invalidation action against a trademark registration due earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark, applied to the same or similar goods or services, has been extended from three to five years, counted from the date of publication of the trademark registration in the Mexican Official Gazette.

The new cause of invalidation and extended term will only affect trademark registrations issued on August 10, 2018 and thereafter, regardless the date of application.

14. Notifications. Decisions and office actions issued in connection to a trademark application shall now be electronically notified through the Official Gazette.

Officials of the MPTO have explained that the objective of the amendments to the Statute is modernizing and harmonizing the Mexican industrial protection system, according to the current international trends of trademark law. I wonder is such modernization responds to the actual needs of domestic businesses or if it was an extra-logical imitation. Other amendments, such as requesting a statement of use after the third year of issuance of the trademark registration, seem an excessive burden on trademark owners, with no benefit in return.

[1] Article 89, paragraphs V, VI y VII, of the Industrial Property Law, as published in the Official Journal of the Federation on May 18, 2018.

[2] For registration purposes, trade-dress is defined as “the set of different operative elements, image elements, including size, design, color, form disposition, label, package, ornaments or any other that, in combination, allow the identification of a product or service in the market”. Article 89, paragraph VII, , of the Industrial Property Law, as published in the Official Journal of the Federation on May 18, 2018.

[3] Article 15-15.1 of the Free Trade Treaty between the Republic of Chile and the United Mexican States, published in the Official Journal of the Federation on July 28, 1999.

Diario oficial 18-may-18 (marcas)