On May 18, 2018, Mexico enacted significant amendments to the Industrial Property Law. One of the most important changes was the expansion of the concept of “trademark”, from visible signs only to include any sign that could be perceived by the senses (excluding taste). The amendment became effective on August 10, 2018.

Today, Mexico protects (through registration with the Mexican Patent and Trademark Office (MPTO)), the following distinctive signs:

1. Visible signs, such as words, letters, numbers, names, slogans, two dimensional devices and drawings with or without colors.
2. Holographic signs (New!)
3. Three dimensional shapes
4. Sounds (New!)
5. Scents (New!)
6. Trade dress. (New!)[1]
7. The combination of the aforementioned signs.

The above does not mean that, in the past, Mexico did not provide protection to sounds, scents, holographic signs and trade-dress. However, since those signs were not recognized as trademarks, the protection was granted trough more general actions against unfair competition.

The fact that there are distinctive signs that were not registerable, and now can be registered as trademarks, has some important implications, especially in view that registration in Mexico, not use, is the source of the exclusivity rights. Therefore, current users of non-traditional trademarks should hurry to file the application and have the sign registered, regardless any prior use in Mexico. Without a trademark registration (or at least an application) in Mexico, such signs may not be licensed or assigned in our country. Furthermore, a competitor may register an identical or similar sign and then oppose the use by the earlier user. Of course, the first user may have a defense available[2] and action to invalidate the third party’s registration[3], but undoubtedly such a first user would be in a difficult position.

Applying for non-traditional trademarks.

For the purposes of this post, I will only refer to holographic signs, sounds, smells and trade dress, that is, the signs that were not even considered trademarks before the 2018 amendment to the Mexican statute.

I. Holographic signs.

Holographic signs may be registered as a trademark. Aside of the regular data usually provided in a trademark application, the applicant must state a description of the holographic sign and file a specimen of the hologram showing the full holographic effect, or different views of the sign from different angles.

Before the amendment to the law in 2018, many users of holograms seek trademark protection by registering them as regular drawings or word+design trademarks. Now that holograms can be registered as trademarks, there are questions about if the use of a hologram would be regarded as use of a registered trademark referred to a regular design for the purposes of maintenance of the trademark registration and defense against a cancellation action due non-use.

II. Sounds

A sound can be protected as a trademark, provided that it is distinctive. It can be a tune, a noise or a combination thereof.

The applicant must provide a description of the sound and, optionally, a graphic representation of the sound, such as the score of the tune or the drawing of the soundwaves. In any case, the applicant must file an unprotected digital file with the sound (.avi, .mp3, .mp4, .wma, .wmv, .wav or .m4a), so the examiner may reproduce it and make it available for the public in the site of the Mexican Patent and Trademark Office. Although the Mexican Patent and Trademark Office has registered a human voice making a sound (i.e. trademark registration 2,038,934 issued on September 19, 2019), it is yet unclear to me if a jingle (music and lyrics) could be registered in Mexico as a sound trademark.

III. Scents

Distinctive scents may be registered as a trademark.

Besides the general data required for all trademark applicants (name, address, nationality, products/services to be distinguished with the scent), the applicant must describe the scent and may choose to file a sample of product with the distinctive smell. The filing of the product with the trademark application is not compulsory, but the examiner may request it during the examination.

Scent trademarks pose many challenges. There are no rules about how to describe a scent. A description may resemble a wine taste description (i.e. registration 1,966,698 for the scent of Hasbro’s Play Doh: “sweet combination, a little mossy, with faints of vanilla, some cherry aroma and the natural odor of a wheat-based salty mass”… Play Doh will never be the same to me). Other scent descriptions have been plain and simple, such as “bamboo” (registration 1,966,701 for a scent of paint).

There are also questions about how effective is the publication of the issuance of the trademark registration in the Official Gazette as a way to inform the public about what scents are registered (a written description may not be specific enough).

IV Trade-dress

As in the case of other non-traditional trademarks, the applicant for a trade-dress registration must state, besides the general data required for all trademark applications, a written description of the operative and/or image elements that the comprised in the trade-dress, and images of all elements stated in the description.

The MPTO has registered as trademark the trade dress of a can (registration number 2,025,132) a plant pot (registration number 1,966,699) and a dark green bottle with a yellow holed strip around the neck and a rectanglar yellow label on the front (registration number 2,053,192).

The most frequent problem that trade-dress applicants have faced is related to the description of the operative and/or image elements that comprise the trade dress. Examiners often argue that the description is not thorough enough or that it states elements that are not actually part of the trade-dress, such as a traditional trademark (name, word or phrase).

Surprisingly, it seems that the MPTO has not issued any trademark registration for the trade dress of premises, such as restaurants, stores, garages or gas stations.

Franchisors should be particularly mindful of obtaining a trademark registration for all the licensed trademarks, including trade-dress. 

Remember: Trade-dress is a trademark now. It is not illegal in itself using unregistered trademarks, but a franchisor can’t license what it does not own. Due statutory provision, a trademark –including trade-dress- may be licensed only if there is at least a trademark application in Mexico. Furthermore, a third party could register a similar trade-dress to the one the franchisee has the obligation to use under the franchise agreement; in such a scenario, the franchisee may become a trademark infringer, creating potential liability issues also for the franchisor.

Mexican law does not demand proving intrinsic or acquired distinctiveness of trade dress. Actually, trade dress can be registered as a trademark without any use in Mexico or abroad.

[1] The amended statute defines trade dress as the set of operative or image elements (including size, design, color, layout, label, packaging, decoration) that, combined, distinguish a product or service in the market. See article 89, paragraph VII of the Industrial Property Law, as amended on May 18, 2018.

[2] Article 92, paragraph I, of the Industrial Property Law states that a trademark registration is not enforceable against a third party that, in good faith started using in Mexico the same or a confusingly similar trademark to identify the same or similar goods or services, before the filing/priority date or the date of first use, provided that such use in Mexico has been continuous.

[3] According to article 151, paragraph II, of the Industrial Property Law, a trademark registration may be invalidated if a third party started using, in Mexico or abroad, an identical or confusingly similar trademark to identify the same o similar products or services, provided that such use has been continuous. The statute of limitations to file such an action is five years counted from the date of publication of the registration in the Official Gazette.