The burden also affects trademarks protected in Mexico according to the Madrid Arrangement, if the protection was issued on August 10, 2018, or after. The statement of actual and effective use must be filed directly with the Mexican Patent and Trademark Office (MPTO).

The window to file the statutory statement of actual and effective use, and a payment of about US$80.00, is three months counted from the third anniversary of issuance of the registration or protection in Mexico. The term may not be extended and the MPTO will not issue a reminder whatsoever.

Trademark owners (and their agents) must be careful with what they state. The declaration of use may be filed only if the trademark has been actually used in Mexico and it must provide only the goods or services the mark has been used on, and the trademark rights would be limited to the stated products or services.

Failure to timely file the statutory statement of use would result in the automatic lapsing of the trademark, slogan or trade name registration.

The window is small and the consequences of not filing the statement of use are dire. Trademark owners should double-check with their attorneys if they must file the statement of use and the term to do it.

La entrada The burden of stating the use of a trademark in Mexico is a reality se publicó primero en Reyes Fenig.

Both the old Industrial Property Law and the recently enacted Federal Law for the Protection of Industrial Property, state provisions that pose significant challenges, especially for holders of International Registrations. It is not that the Mexican legislation is particularly hostile to foreign applicants using the Madrid Protocol, but it ignores the special situation of users of the Madrid system before the Mexican legal system, namely, that they are not in Mexico.

The following are the three situations that, in my opinion, imply the biggest risk for Madrid users of losing the trademark protection in Mexico.

1. Oppositions.

Under the new law, if an applicant fails to answer an opposition within a two-month term counted from the day after the MPTO notifies said opposition, the trademark application or request for protection in Mexico becomes automatically abandoned. Right now, the MPTO does not issue an office action informing the applicant about the opposition and the term to answer; it just publishes the opposition in the Official Gazette (see example). If there is no office action, the MPTO sends nothing to WIPO.

The owners of International Registrations designating Mexico should review the Official Gazette (available online at https://siga.impi.gob.mx) to check for possible oppositions or hire someone to do it for them. It is true that the number or oppositions is relatively small if compared with the total number of trademark applications, but it takes only one unanswered opposition to ruin your day.

There is a possibility that, under the new law, the MPTO will issue an office action informing about the opposition, instead of simply publishing a notice in the Official Gazette. If this were the case, there is a chance that the MPTO will also send a notice to WIPO, so WIPO may notify the owner of the International Registration about the opposition. This would greatly benefit Madrid users, but we do not know, at this point, if that is going to happen. The Federal Law for the Protection of Industrial Property entered in force less than a month ago and there are many things we do not know how they are going to work.

2. Declarations of use.

All owners of trademark registrations issued on August 10, 2018 and on, must file a declaration of actual and effective use of the trademark (and a fee) with the MPTO within a short non-extendable three-month term after the third anniversary of registration or grant of protection in Mexico.

Another declaration of use is due when or after the renewal for all trademark registrations, no matter the date of issuance of the registration or if it is an International Registration.

Most likely, owners of International Registrations will not file the declaration of use or the fee simultaneously with the renewal application. Fear not: under the new law, the MPTO must request by mean of an office action the declaration of use if it was not filed with the renewal[1]; but do fear, we do not know yet how the MPTO would notify such an office action[2]. The sensible thing to do would be sending the office action to WIPO, allowing WIPO to notify the International Registration holder. However, there is the risk that the MPTO may decide notifying the request for the declaration of use through a publication in the Official Gazette, as it would happen with a regular domestic trademark registration. If the trademark owner fails to timely answer the office action and file the declaration of actual and effective use, the protection in Mexico will be abandoned.

3. Summons of invalidation and cancellation actions.

Many International Registrations get protected in Mexico without difficulties: there were no oppositions or refusals. Of course, that is good, but there is downside. The lack of intervention of a counsel addressed in Mexico also means that the owner of the International Registration does not have an address in Mexico where the MPTO may serve summons of cancellation or invalidation actions.

When the MPTO cannot serve summons of an invalidation or cancellation at the address of the trademark owner, the statute stipulates that the MPTO must serve summons through a publication in the Official Journal of the Federation and one of the main newspapers in Mexico. As you may imagine, there is a high chance that the owner of the International Registration never actually knows about the invalidation or cancellation action, eventually losing the trademark protection.

The only remedy would be appointing a Mexican lawyer or agent for each International Registration where Mexico was designated.

Update December 2020: This unfavorable situation caused for the lack of an address within the Mexican territory will eventually disappear after the third year of protection in Mexico, as a consequence of the filing of the declaration of actual and effective use. As I stated above, the declaration of use must be filed by an agent or counsel in Mexico, and she/he will state an address in Mexico when filing. It would be up to the trademark owners deciding if they want to wait three years before appointing a lawyer in Mexico.

——————————————————-

The Madrid Protocol is a great mechanism to protect trademarks in several jurisdictions in a cost-effective manner. However, maintaining the protection in Mexico involves some challenges that trademark owners should address. Hopefully, the future Rules of the Federal Law for the Protection of Industrial Property, to be published in a not-so-distant future, will soften some of the provisions that negatively impact Madrid users. Meanwhile, trademark owners should take steps to avoid losing rights on their valuable intangible assets.

[1] Under the old law, the trademark owner had only three months to file the declaration of use and fee, counted from the day after WIPO notifies the MPTO the renewal, with no request or office action.

[2] Actually, there is an inconsistency between the new law and the recently amended (November 11, 2020) Administrative Guidelines for the attention of Madrid filings. The new law expressly states that the MPTO will request the declaration of use if it were not filed with the renewal application, but the Guidelines state that no request will be issued. Of course, the law should prevail over the guidelines, but this kind of inconsistencies are not helpful at all.

La entrada The Mexican Industrial Property Law is tough on Madrid users se publicó primero en Reyes Fenig.

The lockdown started on March 24 and ended on July 12, 2020. All deadlines due between March 24 and July 12 were extended to July 13, 2020. Further, all terms calculated in days were suspended during the lockdown, and started running again on July 13.

Notwithstanding the above, the MPTO enabled a “buffer” period in the previous week (July 6 to July 10) to allow applicants to file all sorts of documents in paper at the window of the MPTO, and avoid unmanageable crowds on the first business day.

The MPTO was busy during the lockdown: It enabled new online systems to encourage e-filings, instead of the traditional paper filing at the window of the MPTO. According to the rules of the lockdown, documents and applications filed online and at the window in the “buffer” week during the lockdown, will have as official filing date July 13, 2020. In the case of new applications, since all of them will have July 13, 2020, as filing date, priority will be set according to the serial number of the new applications.

New Federal Law for the Protection of Industrial Property

The new Federal Law for the Protection of Industrial Property (FLIP) was published in the Official Journal of the Federation on July 1st, 2020. It will enter into force on November 5, 2020 and will substitute the current Industrial Property Law (old IPL) enacted in 1991. However the old IPL and the FLIP will coexist for some time.

The main purpose of the new legislation was incorporating the more recent commercial agreements Mexico has signed, especially the United States Mexico Canada Agreement (USMCA). Nevertheless, Mexican law states that a provision stated in an international treaty, such as the USMCA, may be applicable directly in favor of an individual or entity if it stipulates a specific right in benefit of such an individual or entity, even in the absence of local legislation.

The new law provides a more coherent and better structured legislation, not entirely free of some inconsistencies and voids.

FLIP also incorporates some practical guidelines already set by the examiners of the MPTO during the last years, giving applicants mores certainty in some fields of patent and trademark examination.

Pending of new Rules, the Rules of old the IPL will continue in force.

FLIP incorporates most of the 2018 amendments to the IPL. There are substantive changes in the fields of trademarks and industrial designs, but the most relevant changes are in patents and enforcement.

This article will mainly highlight the changes between the old IPL and the new FLIP, rather than making a comprehensive explanation about the new legislation. Future articles and updates will discuss specific issues in FLIP.

A. Inventions

A.1. Double patenting is now expressly forbidden (article 50 FLIP).

A.2. Explicit acknowledgement of patentability of microorganisms and biological material that has been isolated of its natural environment and obtained through a technical procedure (article 49 FLIP).

A.3. Inventions that may put people’s or animals’ life or health at risk, including inventions related to human cloning, human genetic material o the industrial or commercial use of human embryos, may not be patented (article 49 FLIP).

A.4. The Roche-Bolar defense is now part of the statute, without a time limit. A patent may not be enforced against a third party that uses, makes, offers in sale or imports a product claimed in a patent, only if such activities are aimed to generate tests, data and experimental production required to obtain a marketing authorization of a medicine for human health (article 57, paragraph II, FLIP). This defense was already stipulated in the Rules of Health Supplies.

A.5. Patents cannot be extended; the term is still 20 years counted from the filing date. However, the rights provided by a patent may be extended up for five years by means of a Supplementary Certificate, if there was an unreasonable delay in the grant of the patent (articles 126 to 136 FLIP).

A.6. Clearer and more comprehensive rules for divisional patent applications, especially voluntary divisional applications. The new law provides an extremely broad authority for the MPTO to decide if it accepts a divisional application from an already divided application (articles 100 and 102 FLIP).

A.7. Claims may not be constructed beyond the subject matter protected by the patent (article 55 FLIP).

A.8. The new term of utility models will be 15 years counted from the filing date, instead of 10 years (article 62 FLIP).

A.9. The causes to invalidate a patent have been limited to the cases expressly stated in the new statute. There is no statute of limitations to file an invalidation action against a patent (article 154 FLIP).

A.10. Detailed rules and procedure to request the limitation of the rights provided by a patent or correct mistakes (articles 121 a 125 FLIP).

A.11. Software is still not considered an invention, but in itself (article 47, paragraph V, FLIP).

A.12. FLIP provides a twelve-month grace period for inventions disclosed directly or indirectly by the inventor or the assignee and also by third parties that obtained the disclosed information from the inventor or the assignee. Such a disclosure would not affect the novelty of the invention.

B. Distinctive signs

B.1. The term of registered trademarks –including collective and certification marks-, registered slogans and tradenames, will be ten years counted from the date of registration or publication, instead of ten years from the filing date (articles 178, 204 and 211, FLIP).

B.2. Instead of a formal and substantive examination, there is now a single exam (article 225 FLIP).

B.3. The description of goods or services in a trademark application has to be determined and specific. We still do not know if multiple-class applications will be accepted; the Rules of FLIP will stipulate it (articles 176 FLIP and 57, paragraph I, of the Rules of the old IPL).

B.4. Oppositions. The consequences of filing oppositions are more serous now for all involved parties:

B.4.a. Unsuccessful oppositions will cause the opponent losing the right to file an invalidation action, using the same arguments and evidence, against the opposed trademark after its registration (article 259 FLIP).

B.4.b. The trademark applicant will have two months to answer the opposition and file all the evidence to support the right to the trademark. If the applicant does not answer the opposition, the trademark application will become abandoned (article 225 FLIP).

B.5. The MPTO may start ex officio an invalidation action against a trademark that identifies a product that, being subject of some regulation or specific legislation, breaks the applicable rules or provisions (article 178 FLIP). It is a new and odd provision, that stipulates losing trademark rights as a penalty due the infringement of laws or regulations not related whatsoever to the trademark.

B.6. Trademark coexistence agreements and letters of consent are still binding for the MPTO, but there are some changes. FLIP now provides that consent and coexistence agreements are acceptable for identical or confusingly similar trademarks to identify similar goods or services (article 123 FLIP). The consent is no longer valid to overcome the anticipation if the trademarks cover the same goods or services.

B.7. Declarations of actual and effective use. Trademark owners must file a declaration of actual and effective use after when renewing and after the third anniversary of issuance of the registration. The transitory articles of FLIP clarified that the burden of filing the declaration of use after the third year is due only for registrations issued on August 10, 2018, and thereafter. If the declaration of use were not filed when renewing, as it will happen with International Trademark Registrations issued according the Madrid Protocol, the MPTO will issue an office action requesting such a declaration within a two-month term (article 237 FLIP). These are very good news for Madrid trademark owners, although we do not know how the MPTO will notify such a request: (i) through a notice to WIPO; or (ii) through a notification in the Official Gazette.

B.8. FLIP now expressly provides that the goods or services described in trademark registrations shall be limited to the ones stated in the declarations of actual and effective use (articles 233 and 237 FLIP).

B.10. FLIP will allow partial cancellation and invalidation actions, so the invalidation or cancellation may affect only some of the goods or services listed in the registration (articles 258, paragraphs II and IV; 260, paragraph II, FLIP).

B.10. FLIP gave a blow to the date of first use, by stating that a trademark may be invalidated if the right holder does not prove that the date of first use stated in the trademark application is true (article 258, paragraph III, FLIP).

C. Appeals of Origin

C.1. FLIP regulates appeals of origin and geographical designations. However, FLIP defines the appeal or origin in a weird way: “a product linked to the geographical area it comes from, if its quality, characteristics or reputation are exclusively or essentially because the geographical origin of the raw materials and production process and the natural and human factors that influence the product”. FLIP should have defined the appeal of origin as a geographical name used to name a product originated from such area, not as a product. This change in the statute increases the differences between the Mexican legislation and rules about appeals of origin and the Lisbon Arrangement.

D. Contentious procedures

D.1. Now there is a limited list of causes that may lead to the invalidation of a Mexican patent. There is no general cause of invalidation of a patent and a patent may not be invalidated due procedural flaws during the examination of the application. (articles 154 y 258, paragraph I, FLIP).

D.2. FLIP now stipulates that the invalidation of a trademark registration has retroactive effects. And the cancellation due lack of use has consequences from the date the decision is issued. The invalidation of a patent also has retroactive effects, but such consequence was already provided in the old IPL. (article 159 and 263, FLIP).

D.3. FLIP now provides rules for a conciliatory procedure to try to settle infringement actions (articles 372 to 385, FLIP).

D.4. Manufacturing, offering in sale, transporting, storing, distributing, importing and exporting goods or services identified with a trademark or incorporating an utility model, industrial design or layout design (topography) is considered “use” of such trademark, utility model, industrial design or layout topography design and, if not authorized, a cause of infringement. It is no longer required proving that the infringer knew that the registered trademark, utility model, industrial design or layout topography design was illegally used. (Articles 386, paragraphs IX, X, XI, XIII, XVII and XXI, and 387, FLIP). These new provisions significantly increase the potential liability of retailers.

D.5. Offering in sale patented goods or goods that were obtained using  a patented process, without authorization, is an infringement, even if the infringer did not know about the patent rights (article 386, paragraphs VI and VIII, FLIP).

D.6. The MPTO has, under FLIP, authority to impose and collect fines, as a tax authority (articles 5°, paragraph VI, and 393, FLIP).

D.7. FLIP provides that he MPTO has authority to calculate and award damages and loses after issuing an infringement decision (article 396, paragraph I, FLIP).The MPTO may not award attorney’s fees. The MPTO’s decision awarding damages or loses has to be enforced by a court of common jurisdiction.

D.8. Under FLIP, the owner of a registered trademark or patent, and the licensee, may claim with a court of common jurisdiction damages and loses from due the illegal use of the trademark or patent, without a prior infringement decision from the MPTO (article 396, paragraph II, FLIP).

D.9. FLIP, and the old IPL, provides punitive damages and loses, and different ways to calculate it. Under FLIP, the minimum amount of the punitive damages would be the equivalent of the 40% of the “legitimate value index”. Different sources may be used to set the legitimate value index: the retail price of the legitimate goods, the profits that the rights holder lost, the profits earned by the infringer or the commercial value of a contractual license. (article 396, paragraphs I, II, III y IV, FLIP).

In any case, the plaintiff would have to prove it suffered an actual damage or loses and the consequential link between the infringement and such actual damages or loses.

D.10. The courts are authorized to enforce the preliminary measures provided in FLIP and the international treaties (article 408, paragraph I, FLIP).

D.11. The alleged infringer may ask the MPTO or the court to lift the preliminary measures by filing a counterbond but, under FLIP, the MPTO or the judge must evaluate the prima facie affected IP rights, the possible harm that the preliminary measures and the lifting of the preliminary measures may cause to the IP owner and the alleged infringer and the impact on public good before deciding. There is no “cap” for the amount of the counterbond, as in the old IPL (article 346 FLIP).

E. Contracts regulated by FLIP

E.1. Licenses. There is no need to record the license so the use of the trademark or patent is deemed as performed by the right holder (articles 138 and 240, FLIP), as stated in TMEC. No license recordal is required either to allow the licensee file infringement actions against third parties (unless the license expressly states otherwise). The law does not state either that the recordation of the license is necessary to the license becomes enforceable against third parties, such as good faith assignees.

E.2. Creditors and beneficiaries of securities and guarantees recorded with the MPTO are entitled to file the application for the renewal of the trademark registration without filing the declaration of actual and effective use. The law is silent about if creditors and beneficiaries of securities affecting patents, industrial designs, utility models and layout topography designs are entitled to pay maintenance annuities.

La entrada News from Mexico: the end of lockdown and a new patents and trademarks law se publicó primero en Reyes Fenig.

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.

La entrada Protecting non-traditional trademarks in Mexico se publicó primero en Reyes Fenig.

One of the measures to try to slow down the spread of the disease is stopping non-essential activities, both in the government and private sectors.

Naturally, these measures have affected the industrial property system.

The Mexican Patent and Trademark Office

On March 23, 2020, the Instituto Mexicano de la Propiedad Industrial (IMPI) or Mexican Patent and Trademark Office (MPTO) issued an order, suspending all deadlines due after March 24 and April 19, 2020; all such deadlines were extended for an undetermined period that will be reviewed in weekly basis. to April 20, 2020 (Update April 19, 2020: The suspension of deadlines has been extended to May 4, 2020 Update April 30: The suspension has been extended. Now all deadlines due between March 24 and May 31 are due on June 1, 2020).  Although the order does not provides that all days after between March 24 and April 19, 2020, are non-business days, no documents or applications may be filed, or notifications served, within such period (Update April 19, 2020: The MPTO started accepting online applications and documents related to trademarks and patents on April 16, 2020. Deadlines are still suspeded, but it is unclear if the filing date of such electronic documents would be the actual filing date or the date when the MPTO opens again. Update June 5, 2020: On May 13, 2020, the MPTO enabled an online platform that allows electronic filing of renewals, declarations of use, licenses and assignments. The MPTO plan this platform to be permanent). Terms calculated in days (such as the 10 business-day term to answer an infringement action) have been suspended. A copy of the order (in Spanish) and the updates thereof (in Spanish) are available here, here,  here and here.

The suspension does not affect the terms calculated in months or years. For example, if the MPTO served an officeaction regarding the examination of a patent or trademark application on February 22, 2020, the initial two-month term to answer would be calculated as normal and the answer would be due on April 23, 2020. The only change would be the deadline; if  the answer was originally due between on or after March 24 and April 19 May 3, May 31, 2020, the deadline would be extended to the first business day of the MPTO after the suspension April 20 May 4 June 1, 2020; and the automatic two-month term extension would start the day after on April 21 May 6, June 2 2020 (May 5 is holiday).

For a few days, between March 24 and March 26, 2020, the MPTO was on partial lockdown. Documents and applications on paper were received at the window of the MPTO, but the filing date of all such documents would be April 20, 2020 June 1, 2020 the first business day after the lockdown. Electronic documents and applications were not accepted (Update April 19, 2020: Starting April 16, 2020, the MPTO is acepting online application and documents again).

On March 26, 2020, the MPTO widened the suspension of activities. Starting March 27, the MPTO has suspended virtually all acivities and the offices are closed. The only exceptions are actions essential for the mitigation of the Covid-19 outbreak and enforcement of orders to lift preliminary measures issued in infringement procedures. The new order (in Spanish) is available here.

The MPTO refrained from providing a schedule to restart activites. That would be decided in weekly basis and in coordination with the federal sanitary auhtorities. is scheduled to restart normal operations again on April 20 June 1, 2020.

The Federal Court of Administrative Affairs and the federal courts of appeals

The courts also shut down. (Update April 30, 2020: The Federal Courts are under partial lockdown, and provisions to allow online meetings between the judges have been enacted. Urgent matters will have preference, but online meetings should help to reduce the growing backlog of decisions. All terms and deadlines have been suspended; deadlines due between March 18 and May 31 have been extended to June 1, 15, 2020).

The Tribunal Federal de Justicia Administrativa or Federal Court of Administrative Affairs (FCAA) and all its panels, including the the Sala Especializada en Propiedad Intelectual or Specialized Panel in Intellectual Property, and the tribunales colegiados de circuito or federal courts of appeals, closed on March 18, 2020. A few district courts and courts of appeals are open for emergency cases only. (Update April 30, 2020: The panels of the FCAA are working online to decide urgent matters).

In both the FCAA and the courts of appeals, all days between March 18 to April 19, May 31, June 14, 2020, would be considered as non-business days, and would not be counted for terms calculated in days (such as the term to file an appeal against a decision of the MPTO).

The courts are scheduled to start working again on April 20, 2020 (Update April 19, 2020: The courts are now scheduled to restart activities on May 6, 2020 Update April 30, 2020: The courts are scheduled to restart full activities on June 1, 2020. Update June 5, 2020: The courts are scheduled to restart full activities on June 15, 2020). All deadlines due between March 18 and May 431 June 14, would be extended to April 20, May 6 June 1 15, 2020.

The setting of a possible date to restart normal activities (April 20, 2020) was not based on scientific data, but to match the date students go back to school after the Easter holidays.

The non-business period may be extended, depending on how the Covid-19 outbreak develops.

Dear reader, please stay safe and help others staying safe.

La entrada The temporary shut down of the Mexican Patent and Trademark Office and courts (updated to June 5, 2020) se publicó primero en Reyes Fenig.

Trademark registration is extremely important in Mexico. Our country does not have common law rights whatsoever, thus registration with the Mexican Patent and Trademark Office (MPTO) is the only way to get exclusivity rights on a trademark. Both traditional (visual signs) and non-traditional (scents, sounds and trade-dress) trademarks may be registered.

The rule is that all distinctive signs may be registered, but there are exceptions and prohibitions; most exceptions and prohibitions are concentrated in article 90 of the Industrial Property Law.

Further, article 4^th of the Industrial Property Law provides a general prohibition, stating that no patent, registration of authorization shall be issued or published in the Official Gazette if the content or form is against public order, moral or good customs or against a statutory provision.

The general prohibition of article 4^th allows the MPTO and courts to refuse or invalidate the registration of trademarks that are not listed in the exceptions and prohibitions of article 90, but are still illegal (for example, a figurative trademark that reproduces a copyrighted drawing without authorization of the copyright holder) or trademarks that the examiner considers immoral or against public order. Further, the Industrial Property Law not only prohibits the registration of trademarks that are immoral and against public order (preventing the applicant from obtaining exclusivity rights on them); using trademarks deemed to be immoral or against public order is illegal and would be a cause of administrative infringement, as stipulated in Article 213, paragraph VII, of the Industrial Property Law.

I have discussed these sorts of trademarks in the past, namely trademarks that reproduce the names/nicknames of criminals or make clear reference to criminal organizations, such as “EL CHAPO GUZMAN” and “LOS ZETAS”.

A recent non-binding precedent from the federal court of appeals published on June, 2019, called my attention to immoral and offensive trademarks again[1].

The case involved trademark application number 1,832,646 (now registration number 2,038,915) for the trademark “PINCHE GRINGO BBQ” & Design.

The trademark application for “PINCHE GRINGO BBQ” & Design was filed on December 15, 2016, to identify services provided by restaurants, cafeterias and bars. The applicants were Messrs. Daniel Andrew de Fossey (an American citizen) and Roberto Luna Aceves (a Mexican citizen).

As some readers may know, “gringo” is the way many Mexicans and other Latin Americans call people or things from or related to the United States of America[2]. Depending on the context, “gringo” may be a very familiar way to address an American individual or object, or it can be a pejorative expression. “Pinche” has different meanings: a noun referring to the helper of a cooker; or, more common (I think), “pinche” is an adjective for something or someone with little value or appreciation.

After a preliminary refusal, the MPTO issued the final refusal of the trademark application, stating that the phrase “PINCHE GRINGO BBQ” was an insult; therefore “PINCHE GRINGO BBQ” & Design was a trademark against good customs and public order. The final refusal was later affirmed (in a split decision) by the Specialized Panel in Intellectual Property (SEPI) of the Federal Court of Administrative Affairs.

The applicant filed a final appeal or “amparo” appeal. It was decided by the Cuarto Tribunal Colegiado or Fourth Panel in Administrative Matters of the Federal Court of Appeals in Mexico City[3].

The basic argument of the applicants in the final appeal was that the phrase “PINCHE GRINGO” was not intended as an insult, but as a reference to a helper in the kitchen that was an American; and that the decision of the MPTO and the SEPI of limiting the meaning of the trademark to an insult was an illegal unilateral ruling that ignored a plausible different meaning with no negative connotation, considering the services listed in the application (services provided by restaurants, cafeterias and bars).

The applicants also argued that article 4^th of the Industrial Property Law was against the Constitution, namely the freedom to conduct any legal trade, activity or profession.

The court of appeals ruled that the trademark “PINCHE GRINGO BBQ” & Design was not against good customs and public order, and refrained from analyzing if article 4^th of the Industrial Property Law was against the Constitution. Although freedom of speech was not an issue in itself in the final appeal, the court used some precedents from the Mexican Supreme Court regarding the freedom to speech to support the decision.

Basically the court of appeals stated that the concept of public order has no clear definition in Mexican law, in spite of the fact that the Mexican Constitution and many statutes make explicit reference to public order. The court did state that public order always seeks a minimum standard of social harmony, and that the possible harm of public order must be decided on case by case basis. The court also stated that a broader concept of public order implies a larger limitation of human rights (freedom of speech for example), so a human-rights oriented system should seek a restrictive scope of protection of public order in order to enlarge the scope of human rights.

In another part of the decision, the court ruled that morality and good customs are intrinsically connected concepts that, by nature, are variable from time to time and from place to place. Therefore, judges (and examiners) must decide on case by case basis, if an expression is immoral or against good customs or uses. The court ruled that an insult may not be registered or used as a trademark; freedom of speech does not mean there is a right to insult others. However, an apparent insult that, under a specific context,  may be plausibly understood with a different non-offensive meaning, is not against public order, immoral or against good customs, and may be registered as a trademark.

When there is a mark with two possible meanings, one offensive and the other not, the examiner and the court have to decide which one would be more reasonable to consider for the approval or refusal of the trademark application. The precedent from the court of appeals provides a useful guideline.

The court stated that there should be different bars to measure if an expression may be offensive or not, depending on the community or group that may be affected by the alleged insult. The court stated that, in the case of groups and communities that have been historically discriminated or referred to in a pejorative way because race, gender, sexual orientation or skin color, the degree of protection they are entitled to against insults and offensive expressions, should be higher. Authorities must be less tolerant to possibly insulting phrases or words directed to such discriminated communities or people, than in the case of less vulnerable or dominant groups.

Unlike women, indians (Mexican natives), African-descendants or gays, Americans living in Mexico –I believe– have not been a community historically discriminated by Mexican society. In the specific case of “PINCHE GRINGO BBQ”, the court of appeals explicitly considered that the fact that one of the applicants was an American citizen (a “gringo”) and that the trademark would identify a restaurant presumably specialized in American cuisine, were relevant to conclude that the trademark “PINCHE GRINGO BBQ” was not fundamentally an insult and that it was reasonable to state that the phrase was making reference to a kitchen aidee that happened to be an American individual, rather than a pejorative way to identify an American. If the mark would have alluded to an indian (i.e. “PINCHE INDIO BBQ”), I think the outcome would have been adverse to the applicants, no matter the non-offensive meaning the phrase may have.

It is all about context. Words and signs that were openly acceptable fifty years ago are now almost forbidden in public, while some vulgar expressions that were not allowed in a decent conversation are now freely used in mass media and ads. Contexts change according the time and place. The court of appeals gave some objective guidance about the availability as trademarks of possibly offensive expressions, flexible enough to change if and when the contexts also change.

[1] “Marcas. Debe permitirse su registro aun cuando su denominación contenga una palabra malsonante, si ésta no es su única connotación, debiendo tener en cuenta su uso en el caso específico y un criterio de excepcionalidad al invocar la afectación al orden público (inaplicabilidad del artículo 4o. de la Ley de la Propiedad Industrial)”, at Gaceta del Semanario Judicial de la Federación, Décima Época, Libro 67, Junio de 2019, Tomo VI, page 5205 (Electronic version: http://sjf.scjn.gob.mx/SJFSist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=2020128&Dominio=Localizacion&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=2020128&Hit=1&IDs=2020128&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=. Date: December 28, 2019). The public version of the decision (in Spanish) is available here.

[2] Some sources state that “gringo” is a word that refers to English-speaking people. In my experience, the word is specific for Americans. Of course, a white English-speaking individual may easily identified as gringo, regardless her/his true origin.

[3] The federal courts of appeals are organized in tribunales or panels of three judges each. In some zones (such as Mexico City or, technically, the First Circuit), panels are specialized. Amparo appeals against decisions from the Specialized Panel in Intellectual Property of the Federal Court of Administrative Affairs are decided by one of the twenty one panels specialized in administrative matters of the Federal Court of Appeals in Mexico City.

La entrada New precedent about trademarks considered immoral or against public order in Mexico se publicó primero en Reyes Fenig.

In this post I provide an updated list, until the end of 2018, of registered trademarks that have been acknowledged as well-known or famous in Mexico by the Mexican Patent and Trademark Office (MPTO) through the ad hoc procedure provided in article 98 Ter 1 (formerly 98 Bis 1) of the Industrial Property Law.

There are several ways a trademark may be acknowledged as well-known or famous in Mexico; the ad hoc procedure is not the only one. A trademark may be acknowledged as well-known or famous in the decision of a contentious procedure, such as an invalidation or infringement action at the MPTO. A trademark may also be acknowledged as famous or well-known in a trademark registration procedure, when the examiner states that the applied trademark may not be approved because it is identical or confusingly similar to a famous or well-known trademark, without a prior acknowledgement in a contentious or ad hoc procedure. For example, the trademark “AMEX” owned by American Express Marketing & Development Corp. was declared famous in Mexico when the examiner issued an office action in the trademark applications number 1,981,308 “AMEX” (& Design), 1,981,310 “AMEX” (& Design) and 1,981,311 “AMEX” (& Design)[1]. Actually, the trademark “AMERICAN EXPRESS” has been acknowledged as famous in Mexico through the ad hoc procedure.

The acknowledgment of a trademark as well-known or famous is a de facto recognition, not de iure. A well-known trademark today may not be well-known tomorrow. The acknowledgment of a trademark as well-known or famous does not provide exclusivity rights, but the holder may file legal actions to stop third parties from using identical or similar marks or invalidate other party’s trademark registrations. One of the advantages of the ad hoc acknowledgement is that it extends the recognition of a de facto situation by the trademark authorities over time, for at least five years, and may be updated (similar to a renewal) if the holder proves that the trademark continues being well-known or famous.

After reviewing the list of trademarks that have applied for the ad hoc acknowledgments, I noticed that famous has been preferred over well-known. Some holders of well-known trademarks have decided to refrain from updating the recognition and file for the acknowledgment as famous (i.e.: MOMIAS DE GUANAJUATO” and “RICOLINO”). By the end of 2018, there were only five well-known updates; on the other side, there were nineteen updates of recognitions of famous trademarks. This trend was already noticeable in 2013.

The famous trademarks are in a better position than well-known trademarks, especially after the 2018 amendments to the law: Article 90, paragraph XVII of the Industrial Property Law (as amended on May, 2018) prohibits the registration of trademarks identical or confusingly similar to marks that the MPTO considers famous for any product or service whatsoever. The prohibition is similar in the case of well-known trademarks, but there has to be the risk of unfair competition, harming the reputation of the well-known mark, dilution of the well-known mark or association of the applicant with the holder of the well-known trademark.

Further, article 213, paragraph VII, of the Industrial Property Law (as amended on May, 2018) states that using a mark identical or confusingly similar to a trademark considered by the MPTO as famous is an infringement, regardless the goods or services identified with the infringing mark.

A well-known or famous trademark continues being well-known or famous, even if the holder decides not updating the ad hoc acknowledgment. As I stated, the acknowledgment of a trademark as famous or well-known is the recognition of a de facto situation that may persist regardless any filing with trademark authorities. In the absence of the ad hoc acknowledgment, if the holder wants to claim that its mark is well-known or famous, it would have file all evidence required to prove it.

It is not clear if, in the case of an infringement action involving a trademark that has been acknowledged as famous or well-known through the ad hoc procedure, such acknowledgment would be enough evidence to prove such a status or if the holder should file additional evidence to prove that the mark is indeed well-known or famous.

The following is the list of trademarks acknowledged as well-known or famous by the MPTO through the ad hoc procedure published in the Official Gazette until the end of 2018. Of course, there are other trademarks acknowledged as famous or well-known out of the ad hoc procedure, so this is a non-limitative list.

1. Trademarks acknowledged as well-known through the ad hoc procedure:

A.1. Trademark: “ANDREA”

Trademark registration number: 572,692

Date of acknowledgment: November 4, 2008.

File number M.N. 2197/2007 (G-1) 18189

Owner: Fábricas de Calzado Andrea, S.A de C.V.

Gazette: May 2009

Status: Live (Updated. Gazette February 2016)

A.2. Trademark: “PRITT”

Trademark registration number: 154,268

Date of acknowledgment: June 30, 2010

File number: M.N. 638/2009 (T-4) 5766

Owner: Henkel AG & Co. KGAA

Gazette: June 2010

Status: Live (Updated. Gazette August 2016)

A.3. Trademark: “BARCEL”

Trademark registration number: 164,548

Date of acknowledgment: March 22, 2010

File number: M.N. 102/2009 (T-1) 1032

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: March 2010

Status: Expired

A.4. Trademark: “RICOLINO”

Trademark registration number: 255,612

Date of acknowledgment: April 5, 2010

File number: M.N. 104/2009 (T-2) 1037

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: April 2010

Status: Expired

A.5. Trademark: “RESISTOL”

Trademark registration number: 41,955

Date of acknowledgment: September 28, 2010

File number: M.N. 480/2009 (T-3) 4037

Owner: Henkel Capital, S.A. de C.V.

Gazette: September 2010

Status: Live (Updated. Gazette July 2016)

A.6. Trademark: “LAS MOMIAS DE GUANAJUATO”

Trademark registration number: 857,331

Date of acknowledgment: December. 7, 2010

File number: M.N. 785/2009 (T-5) 7179

Owner: Municipio de Guanajuato

Gazette: December 2010

Status: Expired

A.7. Trademark: “HOTELES CITY EXPRESS”

Trademark registration number: 780,478

Date of acknowledgment: December 21, 2010

File number: M.N. 1848/2009 (T-6) 15328

Owner: Hoteles City Express, S.A.B. de C.V

Gazette: December 2010

Status: Live (Updated. Gazette February 2017)

A.8. Trademark: “ADO”

Trademark registration number: 843,017

Date of acknowledgment: May 31, 2011

File number: M.N. 1429/2010 (T-2) 14091

Owner: Autobuses de Oriente ADO, S.A. de C.V.

Gazette: May 2011

Status: Expired

A.9. Trademark: “ELEKTRA”

Trademark registration number: 390,819

Date of acknowledgment: July 29, 2011

File number: M.N. 1355/2010 (T-1) 13639

Owner: Elektra Trading & Consulting Group, S.A. de C.V.

Gazette: July 2011

Status: Expired

A.10. Trademark: “SUPER PRECIO”

Trademark registration number: 650,945

Date of acknowledgment: November 18, 2011

File number: M.N. 1600/2011 (T-2) 14855

Owner: Tiendas Súper Precio S.A. de C.V.

Gazette: November 2011

Status: Expired

A.11. Trademark: “PAYASO”

Trademark registration number: 757,764

Date of acknowledgment: December 16, 2011

File number: M.N. 2148/2010 (T-3) 19884

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: December, 2011

Status: Live (Updated. Gazette September 2018)

A.12. Trademark: “CORONADO”

Trademark registration number: 887,611

Date of acknowledgment: February 9, 2012

File number: M.N. 2150/2010 (T-4)19900

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: February 2012

Status: Live (Updated. Gazette July 2018)

A.13. Trademark: “MELATE”

Trademark registration number: 932,323

Date of acknowledgment: October 31, 2012

File number: M.N. 2141/2011 (T-3) 19611

Owner: Pronósticos Para la Asistencia Pública

Gazette: October 2012

Status: Expired

A.14. Trademark: “ARENA MÉXICO”

Trademark registration number: 1,238,811

Date of acknowledgment: June 30, 2014

File number: M.N. 2440/2012 (T1) 22105

Owner: Nueva Arena México S.A. de C.V.

Gazette: June 2014

Status: Live a June de 2019

A.15. Trademark: “EKCO”

Trademark registration number: 51,806

Date of acknowledgment: July 29, 2014

File number: M,N. 1420/2013 (T-4) 14609

Owner: Grupo Vasconia S.A. de C.V.

Gazette: July 2014

Status: Live a July de 2019

A.16. Trademark: “VASCONIA”

Trademark registration number: 256,034

Date of acknowledgment: July 31, 2014

File number: M.N. 789/2013 (T-3) 8609

Owner: Grupo Vasconia S.A. de C.V.

Gazette: July 2014

Status: Live a July de 2019

A.17. Trademark: “ENSUEÑO”

Trademark registration number: 891,080

Date of acknowledgment: November 24, 2014

File number: M.N. 2350/2013 (T-6) 23478

Owner: Industrias Alen S.A. de C.V.

Gazette: November 2014

Status: Live

A.18. Trademark: “DINA”

Trademark registration number: 380,305

Date of acknowledgment: December 19, 2014

File number: M.N. 1618/2013 (T-5) 16571

Owner: Dina Camiones S.A. de C.V.

Gazette: December 2014

Status: Live

A.19. Trademark: “S MART” (& Design)

Trademark registration number: 1,409,909

Date of acknowledgment: March 31, 2015

File number: M.N. 672/2014 (T-2) 6386

Owner: S-Mart Mexicana, S.A. de C.V.

Gazette: March 2015

Status: Live

A.18. Trademark: “VERO”

Trademark registration number: 658,862

Date of acknowledgment: March 31, 2015

File number: M.N. 2617/2013 (T-7) 26053

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: March 2015

Status: Live

A.19. Trademark: “CAPRICE”

Trademark registration number: 354,077

Date of acknowledgment: April 30, 2015

File number: M.N. 839/2014 (T-3) 8395

Owner: CPIF Venture, Inc.

Gazette: April 2015

Status: Live

A.20. Trademark: “ELECTROLIT”

Trademark registration number: 461,398

Date of acknowledgment: May 27, 2015

File number: M.N. 1494/2014 (T-4) 15324

Owner: Laboratorios Pisa, S.A. de C.V.

Gazette: May 2015

Status: Live

A.21. Trademark: “TECATE TITANIUM”

Trademark registration number: 1,522,414

Date of acknowledgment: December 15, 2015

File number: M.N. 109/2015 (T-1) 869

Owner: Cervecería Cuauhtémoc Moctezuma, S.A. de C.V.

Gazette: December 2015

Status: Live

A.22. Trademark: “LEXUS”

Trademark registration number: 707,597

Date of acknowledgment: December 20, 2016

File number: M.N. 1861/2015 (T-3)16847

Owner: Toyota Jidosha Kabushiki Kaisha

Gazette: December 2016

Status: Live

A.23. Trademark: “MERCK”

Trademark registration number: 85,741

Date of acknowledgment: December 20, 2016

File number: M.N: 3344/2015 (T-4) 29581

Owner: Merck KGAA

Gazette: December 2016

Status: Live

A.24. Trademark: “WET LINE XTREME PROFESSIONAL X” (& Design)

Trademark registration number: 982,278

Date of acknowledgment: January, 31 2017

File number: M.N. 1393/2015 (T-2) 11408

Owner: Henkel AG & Co. KGAA

Gazette: January 2017

Status: Live

A.25. Trademark: “D`PORTENIS” (& Design)

Trademark registration number: 706,852

Date of acknowledgment: July 31, 2017

File number: M.N. 2008/2016 (T-2) 19837

Owner: Mas Diferente, S.A. de C.V.

Gazette: July 2017

Status: Live

A.26. Trademark: “NAVITEK”

Trademark registration number: 538,768

Date of acknowledgment: July 31, 2017

File number: M.N. 2149/2016 (T-3)21177

Owner: Navilux, S.A. de C.V.

Gazette: July 2017

Status: Live

A.27 Trademark: “SENOSIAIN”

Trademark registration number: 62,173

Date of acknowledgment: November 30, 2017

File number: M.N. 821/2017 (T-3) 9522

Owner: Alparis, S.A. de C.V.

Gazette: November 2017

Status: Live

A.28. Trademark: “TAJIN”

Trademark registration number: 320,328

Date of acknowledgment: May 31, 2018

File number: M.N. 2528/2016 (T-4) 24787

Owner: Golosinas de México, S.A. de C.V.

Gazette: May 2018

Status: Live

A.29. Trademark: “ANNTAYLOR” (& Design)

Trademark registration number: 1,831,474

Date of acknowledgment: September 14, 2018

File number: M.N. 225/2014 (T-1) 1758

Owner: Annco, Inc.

Gazette: September 2018

Status: Live

A.30. Trademark: “KOTEX” (& Design)

Trademark registration number: 20,937

Date of acknowledgment: November 28, 2018

File number: M.N. 544/2017 (T-2) 6847

Owner: Kimberly-Clark Worldwide, Inc.

Gazette: November 2018

Status: Live

A.31. Trademark: “ANCE” (& Design)

Trademark registration number: 1,761,532

Date of acknowledgment: December 7, 2018

File number: 1096/2018 (T-1) 11698

Owner: Asociación de Normalización y Certificación, A.C.

Gazette: December 2018

Status: Live

1. Trademarks acknowledged as famous through the ad hoc procedure:

B 1. Trademark: “CINÉPOLIS”

Trademark registration number: 1,039,899

Date of acknowledgment: November 20, 2009

File number: M.F. 1256/2008 (G-1) 10963

Owner: Cinemas de la República, S.A. de C.V.

Gazette: December 2009

Status: Live (Updated. Gazette January 2015)

B.2. Trademark: “INTEL”

Trademark registration number: 277,115

Date of acknowledgment: August 23, 2010

File number: M.F. 1577/2008 (G-2) 13777

Owner: Intel Corporation

Gazette: August 2010

Status: Live (Updated. Gazette May 2016)

B.3. Trademark: “RED BULL”

Trademark registration number: 848,424

Date of acknowledgment: February 19, 2010

File number: M.F. 2284/2008 (G-3) 18288

Owner: Red Bull GmbH

Gazette: February 2010

Status: Live (Updated. Gazette September 2015)

B.4. Trademark: “MARINELA”

Trademark registration number: 261,258

Date of acknowledgment: March 12, 2010

File number: M.F. 103/2009 (G-3) 1033

Propietario: Grupo Bimbo, S.A.B. de C.V.

Gazette: March 2010

Status: Live (Updated. Gazette October 2015)

B.5. Trademark: “GANSITO”

Trademark registration number: 95,836

Date of acknowledgment: March 12, 2010

File number: M.F. 101/2009 (G-2) 1031

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: March 2010

Status: Live (Updated. Gazette September 2015)

B.6. Trademark: “BIMBO”

Trademark registration number: 697,020

Date of acknowledgment: April 23, 2010

File number M.F. 100/2009 (G-1) 1030

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: April 2010

Status: Live (Updated. Gazette February 2016)

B.7. Trademark: “HARMON HALL” (& Design)

Trademark registration number: 707,108

Date of acknowledgment: September 3, 2010

File number: M.F. 1766/2009 (G-5) 14323

Owner: Harmon Hall Holding, S.A. de C.V.

Gazette: September 2010

Status: Live (Updated. Gazette June 2016)

B.8. Trademark: “BMW” (& Design)

Trademark registration number: 416,369

Date of acknowledgment: September 14, 2010

File number: M.F. 1782/2009 (G-6) 14483

Owner: Bayerische Motoren Werke Aktiengesellschaft

Status: Live (Updated. Gazette August 2016)

B.9. Trademark: “JOSE CUERVO”

Trademark registration number: 382,031

Date of acknowledgment: September 10, 2010

File number: M.F. 2107/2009 (G-9) 17586

Owner: Tequila Cuervo, S.A. de C.V.

Gazette: September 2010

Status: Live (Updated. Gazette June 2016)

B.10. Trademark: “MICROSOFT”

Trademark registration number: 283,589

Date of acknowledgment: November 10, 2010

File number: M.F. 500/2009 (G-4) 4556

Owner: Microsoft Corporation

Gazette: November 2010

Status: Expired

B.11. Trademark: “FLEXI” (& Design)

Trademark registration number: 674,758

Date of acknowledgment: December 7, 2010

File number: M.F. 1794/2009 (G-7) 14570

Owner: Grupo Flexi de León, S.A.P.I. de C.V.

Gazette: December 2010

Status: Expired

B.12. Trademark: “PEPSI”

Trademark registration number: 346,468

Date of acknowledgment: March 29, 2011

File number: M.F. 20175/2009 (G-8) 17296

Owner: Pepsico, Inc.

Gazette: March 2011

Status: Live (Updated. Gazette August 2017)

B.13. Trademark: “BARDAHL”

Trademark registration number: 865,925

Date of acknowledgment: April 15, 2011

File number: M.F. 734/2010 (G-1) 7654

Owner: Bardahl de México, S.A. de C.V.

Gazette: April 2011

Status: Live (Updated. Gazette March 2018)

B.14. Trademark: “PEMEX”

Trademark registration number: 522,165

Date of acknowledgment: May 27, 2011

File number: M.F. 2059/2010 (G-2) 19045

Owner: Petróleos Mexicanos

Gazette: May 2011

Status: Live (Updated. Gazette March 2017)

B.15. Trademark: INNOMINADA (Redbull charging bulls design)

Trademark registration number: 1,165,190

Date of acknowledgment: February 28, 2012

File number: M.F. 2170/2010 (G-4) 19984

Owner: Red Bull GMBH

Gazette: February 2012

Status: Live (Updated Gazette October 2018)

B.16. Trademark: “TAKIS”

Trademark registration number: 547,799

Date of acknowledgment: March 16, 2012

File number: M.F. 2151/2010 (G-3) 19901

Owner: Grupo Bimbo S.A.B de C.V.

Gazette: March 2012

Status: Expired

B.17. Trademark: “YAHOO”

Trademark registration number: 573,530

Date of acknowledgment: May 31, 2012

File number: M.F. 1151/2011 (T-1) 10840

Owner: Oath Inc.

Gazette: May 2012

Status: Live (Updated. Gazette December 2018)

B.18. Trademark: “COHIBA”

Trademark registration number: 306,470

Date of acknowledgment: July 20, 2012

File number: M.F. 2249/2011

Owner: Corporation Habanos, S.A.

Gazette: July 2012

Status: Expired

B.19. Trademark: “TELEVISA”

Trademark registration number: 858,155

Date of acknowledgment: August 31, 2012

File number: M.F. 2276/2011 (G-9) 20624

Owner: Mountrigi Management Group, LTD.

Gazette: August 2012

Status: Expired

B.20. Trademark: “SOY TOTALMENTE”

Trademark registration number: 645,851

Date of acknowledgment: September 28, 2012

File number: M.F. 2004/2011 (G-5) 18612

Owner: El Palacio de Hierro, S.A. de C.V.

Gazette: September 2012

Status: Live (Updated. Gazette November 2018)

B.21. Trademark: “EL PALACIO DE HIERRO” (& Design)

Trademark registration number: 997,244

Date of acknowledgment: September 28,2012

File number: M.F. 2005/2011 (G-6) 18613

Owner: El Palacio de Hierro, S.A. de C.V.

Gazette: September 2012

Status: Live (Updated. Gazette November 2018)

B.22. Trademark: “GANDHI”

Trademark registration number: 559,538

Date of acknowledgment: October 31, 2012

File number: M.F. 2076/2011 (G-7) 19072

Owner: Grupo 78. S.A. de C.V.

Gazette: October 2012

Status: Live (Updated. Gazette November 2018)

B.23. Trademark: INNOMINADA (Batman bat logo)

Trademark registration number: 376,283

Date of acknowledgment: November 30, 2012

File number: M.F. 1989/2011 (G-3) 184879

Owner: DC Comics

Gazette: November 2012

Status: Expired

B.24. Trademark: “BATMAN”

Trademark registration number: 371,343

Date of acknowledgment: November 30, 2012

File number: M.F. 1990/2011 (G-4) 18480

Owner: DC Comics

Gazette: November 2012

Status: Expired

B.25. Trademark: “SUPERMAN” (& Design)

Trademark registration number: 366,500

Date of acknowledgment: December 19, 2012

File number: M.F. 1987/2011 (G-1) 18475

Owner: DC Comics

Gazette: April 2015

Status: Expired

B.26. Trademark: “S” (& Design)

Trademark registration number: 580,446

Date of acknowledgment: January 31, 2013

File number: M.F. 1988/2011 (G-2) 18477

Owner: DC Comics

Gazette: January 2013

Status: Expired

B.27.Trademark: “NACIONAL MONTE DE PIEDAD”

Trademark registration number: 1,338,179

Date of acknowledgment: July 31, 2013

File number: M.F. 1544/2012(G-1) 13793

Owner: Nacional Monte de Piedad, I.A.P.

Gazette: July 2013

Status: Live (Updated. Gazette November 2018)

B.28. Trademark: “TIA ROSA”

Trademark registration number: 168,816

Date of acknowledgment: September 5, 2013

File number: M.F. 2444/2012 (G-3) 22119

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: September 2013

Status: Expired

29. 29. Trademark: “BUBULUBU”

Trademark registration number: 281,881

Date of acknowledgment: October 31, 2013

File number: M.F. 2476/2012 (G-4) 22289

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: October 2013

Status: Expired

B.30. Trademark: “EL CHAVO” (& Design)

Trademark registration number: 969,409

Date of acknowledgment: December 19, 2013

File number: M.F. 2031/2012(G-2) 18336

Owner: Roberto Gómez Fernández

Gazette December 2013

Status: Expired

B.31. Trademark: “CKLASS” (& Design)”

Trademark registration number: 880,569

Date of acknowledgment: January 29, 2014

File number: M.F. 49/2013 (G-1) 348

Owner: Wata Group, S.A. de C.V.

Gazette: January 2104

Status: Live a January de 2019

B.32. Trademark: “PINOL”

Trademark registration number: 472,540

Date of acknowledgment: March 31, 2014

File number: M.F. 1064/2013(G-2) 10856

Owner: Industrias Alen, S.A. de C.V.

Gazette: March 2014

Status: Live a March de 2019

B.33 Trademark: “LA COSTEÑA”

Trademark registration number: 375,684

Date of acknowledgment: April 15,2014

File number: M.F. 1609/2013(G-3) 16521

Owner: Conservas la Costeña, S.A. de C.V.

Gazette: April 2014

Status: Live a April de 2019

B.34. Trademark: “HELVEX”

Trademark registration number: 957,168

Date of acknowledgment: August 20, 2014

File number: M.F. 1691/2013(G-4) 17540

Owner: Helvex, S.A. DE C.V.

Gazette: August 2014

Status: Live a August de 2019

B.35. Trademark: “CLORALEX”

Trademark registration number: 367,713

Date of acknowledgment: September 15, 2014

File number: M.F. 2561/2013(G-5) 25449

Owner: Industrias Alen, S.A. DE C.V.

Gazette: September 2014

Status: Live

B.36. Trademark: “IPHONE”

Trademark registration number: 1,039,157

Date of acknowledgment: September 30, 2014

File number: M.F. 1273/2014 (G-4) 12770

Owner: Apple Inc.

Gazette: September 2014

Status: Live

B.37. Trademark: “ILUSIÓN”

Trademark registration number: 1,474,836

Date of acknowledgment: October 10, 2014

File number: M.N. 303/2013(T-2) 4429

Owner: Diltex, S.A. DE C.V.

Gazette: October 2014

Status: Live

B.38. Trademark: “HERDEZ”

Trademark registration number: 61,432

Date of acknowledgment: October 22, 2014

File number: M.F. 1665/2014 (G-5) 17004

Owner: Herdez, S.A. DE C.V.

Gazette: October 2014

Status: Live

B.39. Trademark: “TORTILLINAS”

Trademark registration number: 409,826

Date of acknowledgment: December 15, 2014

File number: M.F. 2615/2013 (G-6) 26049

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: December 2014

Status: Live

B.40. Trademark: “TRIDIMENSIONAL” (Takis design)

Trademark registration number: 1,172,732

Date of acknowledgment: December 19, 2014

File number: M.F. 2616/2013 (G-7) 26051

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: December 2014

Status: Live

B.41. Trademark: “OMNILIFE”

Trademark registration number: 556,402

Date of acknowledgment: February 27, 2015

File number: M.F. 949/2014 (G-3) 9814

Owner: Grupo Omnilife, S.A. de C.V

Gazette: February 2015

Status: Live

B.42. Trademark: “SICO”

Trademark registration number: 391,088

Date of acknowledgment: April 29,2015

File number: M.F. 270/2014 (G-1) 2375

Owner: Reckitt Benckiser México, S.A. de C.V.

Gazette: June 2015

Status: Live

B.43. Trademark: “LEGO” (& Design)

Trademark registration number: 443,052

Date of acknowledgment: June 30, 2015

File number: M.F. 419/2014 (G-2) 4009

Owner: Lego Juris A/S

Gazette: September 2015

Status: Live

B.43. Trademark: “BUFALO” (& Design)

Trademark registration number: 663,658

Date of acknowledgment: September 30, 2015

File number: M.F. 2559/2014 (G-8) 25562

Owner: Herdez, S.A. de C.V.

Gazette: September 2015

Status: Live

B.44. Trademark: “FIRESTONE”

Trademark registration number: 14,524

Date of acknowledgment: October 22, 2015

File number: M.F. 539/2015 (G-3) 4859

Owner: Bridgestone Licensing Services, Inc.

Gazette: October 2015

Status: Live

B.45. Trademark: “BRIDGESTONE”

Trademark registration number: 1,440,418

Date of acknowledgment: October 22, 2015

File number: M.F. 538/2015 (G-2) 4853

Owner: Bidgestone Corporation

Gazette: October 2015

Status: Live

B.46. Trademark: “EL CHAPULIN COLORADO”

Trademark registration number: 555,383

Date of acknowledgment: November 30, 2015

File number: M.F. 2201/2014 (G-6) 22873

Owner: Roberto Gómez Fernández

Gazette: November 2015

Status: Live

B.47. Trademark: “LG” (& Design)

Trademark registration number: 509,298

Date of acknowledgment: November 30, 2015

File number: M.F. 2456/2014 (G-7) 24867

Owner: LG Corp.

Gazette: November 2015

Status: Live

B.48. Trademark: “TECATE”

Trademark registration number: 134,004

Date of acknowledgment: December 15, 2015

File number: M.N. 123/2015 (G-1) 1073

Owner: Cervezas Cuauhtémoc Moctezuma, S.A. de C.V.

Gazette: December 2015

Status: Live

B.49. Trademark: “HARPIC”

Trademark registration number: 236,065

Date of acknowledgment: February 19,2016

File number: M.F. 782/2015 (G-5) 6460

Owner: Reckitt & Colman (Overseas) Limited

Gazette: February 2016

Status: Live

B.50. Trademark: “DOÑA MARIA”

Trademark registration number: 186,178

Date of acknowledgment: March 31, 2016

File number: M.F. 1962/2015(G-6) 17984

Owner: Herdez, S.A. de C.V.

Gazette: March 2016

Status: Live

B.51. Trademark: “BARCEL”

Trademark registration number: 164,548

Date of acknowledgment: April 29, 2016

File number: 563/2015 (G-4) 5056

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: April 2016

Status: Live

B.52. Trademark: “SIETE MACHOS”

Trademark registration number: 30,648

Date of acknowledgment: May 30, 2016

File number: M.F. 3321/2015 (G-11) 29540

Owner: Comercial Urania, S.A. de C.V.

Gazette: May 2016

Status: Live

B.53 Trademark: “RICOLINO”

Trademark registration number: 255,612

Date of acknowledgment: June 28, 2016

File number: M.F. 2074/2015 (G-7) 19463

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: June 2016

Status: Live

B.54. Trademark: “DEL FUERTE”

Trademark registration number: 216,397

Date of acknowledgment: June 29, 2016

File number: M.F. 2357/2015 (G-9) 20992

Owner: Alimentos del Fuerte, S.A. de C.V.

Gazette: June 2016

Status: Live

B.55. Trademark: “BENOTTO”

Trademark registration number: 138,139

Date of acknowledgment: August 30, 2016

File number: 1240/2016 (G-6) 12339

Owner: Distribuidora de Bicicletas Benotto, S.A. de C.V.

Gazette: August 2016

Status: Live

B.56. Trademark: “IMSS SEGURIDAD Y SOLIDARIDAD SOCIAL” (& Design)

Trademark registration number: 550,086

Date of acknowledgment: September 13, 2016

File number: M.F. 413/2016 (G-1) 5379

Owner: Instituto Mexicano del Seguro Social

Gazette: September 2016

Status: Live

B.57. Trademark: “GAMESA”

Trademark registration number: 347,617

Date of acknowledgment: October 31,2016

File number: M.F. 3361/2015 (G-13) 29660

Owner: Corporativo Internacional Mexicano, S. de R.L. de C.V.

Gazette: October 2016

Status: Live

B.58. Trademark: “EMPERADOR”

Trademark registration number: 448,088

Date of acknowledgment: October 31, 2016

File number: M,F. 3371/2015 (G-13) 29689

Owner: Corporativo Internacional Mexicano, S. de R.L. de C.V.

Gazette: October 2016

Status: Live

B.59. Trademark: “SABRITAS”

Trademark registration number: 98,999

Date of acknowledgment: November 30,2016

File number: 3375/2015 (G-17) 29707

Owner: Pepsico, Inc.

Gazette: November 2016

Status: Live

B.60. Trademark: “ACTIVIA”

Trademark registration number: 658,926

Date of acknowledgment: November 30, 2016

File number: M.F. 930/2016 (G-3) 10003

Owner: Companie Gervais Danone

Gazette: November 2016

Status: Live

B.61. Trademark: “BEST DAY”

Trademark registration number: 1,115,026

Date of acknowledgment: January 31, 2017

File number: 3157/2015 (G-10) 28680

Owner: Viajes Beda, S.A. DE C.V.

Gazette: January 2017

Status: Live

B.62. Trademark: “SALADITAS”

Trademark registration number: 551,018

Date of acknowledgment: March 31, 2017

File number: M.F. 3367/2015 (G-14) 29676

Owner: Corporativo Internacional Mexicano, S. de R.L. de C.V.

Gazette: March 2017

Status: Live

B.63 Trademark: “VERDE VALLE”

Trademark registration number: 251,457

Date of acknowledgment: March 31, 2017

File number: M.F. 941/2016 (G-5) 10085

Owner: Productos Verde Valle, S.A. de C.V.

Gazette: March 2017

Status: Live

B.64. Trademark: “EXA”

Trademark registration number: 630,027

Date of acknowledgment: March 31, 2017

File number: 2964/2016 (G-10) 28889

Owner: Stereorey México, S.A.

Gazette: March 2017

Status: Live

B.65. Trademark: “VINCI”

Trademark registration number: 890,229

Date of acknowledgment: March 31, 2017

File number: M.F. 1447/2016 (G-8) 14704

Owner: Grupo Fila-Dixon, S.A. de C.V.

Gazette: March 2017

Status: Live

B.66. Trademark: “SCHICK”

Trademark registration number: 287,891

Date of acknowledgment: March 31, 2017

File number: M.F. 2189/2015 (G-8) 19956

Owner: Edgewell Personal Care Brands, LLC

Gazette: March 2017

Status: Live

B.67. Trademark: “OXXO” (& Design)

Trademark registration number: 453,234

Date of acknowledgment: April 18,2017

File number: M.F. 186/2017 (G-3) 1747

Owner: Grupo Industrial Emprex, S.A. de C.V.

Gazette: April 2017

Status: Live

B.68. Trademark: “SI VALE”

Trademark registration number: 593,922

Date of acknowledgment: April 28, 2017

File number: M.F. 940/2016 (G-4) 10075

Owner: Si Vale México, S.A. de C.V.

Gazette: April 2017

Status: Live

B.69. Trademark: “NISSAN”

Trademark registration number: 96,287

Date of acknowledgment: July 28, 2017

File number: M.F. 3365/2016 (G-12) 33551

Owner: Nissan Jidosha Kabushiki Kaisha

Gazette: July 2017

Status: Live

B.70. Trademark: “FLEXI”

Trademark registration number: 868,350

Date of acknowledgment: July 31,2017

File number: M.F. 489/2016 (G-2) 6130

Owner: Grupo Flexi de León, S.A.P.I. de C.V.

Gazette: July 2017

Status: Live

B.71. Trademark: “BARCELÓ”

Trademark registration number: 918,959

Date of acknowledgment: July 31, 2017

File number: M.F. 1261/2016 (G-7) 12839

Owner: Quiroocan, S.A. DE C.V.

Gazette: July 2017

Status: Live

B.72. Trademark: “ANDREA” (& Design)

Trademark registration number: 739,383

Date of acknowledgment: July 31, 2017

File number: M.F. 3304/2016 (G-11) 33128

Owner: Fábricas de Calzado Andrea, S.A. de C.V.

Gazette: July 2017

Status: Live

B.73. Trademark: “CORONA”

Trademark registration number: 841,746

Date of acknowledgment: August 31, 2017

File number: M.F. 3417/2016 (G-13) 33798

Owner: Cervecería Modelo de México, S. de R.L. de C.V.

Gazette: August 2017

Status: Live

B.74. Trademark: “PUEBLOS MÁGICOS”

Trademark registration number: 740,363

Date of acknowledgment: September 18, 2017

File number: M.F. 2273/2017 (G-12) 22931

Owner: Secretaría de Turismo

Gazette: September 2017

Status: Live

B.75. Trademark: “VOGUE”

Trademark registration number: 740,363

Date of acknowledgment: September 29, 2017

File number: M.N. 23/2017 (T-1) 231

Owner: Advance Magazine Publishers, Inc.

Gazette: September 2017

Status: Live

B.76. Trademark: “NIKE”

Trademark registration number:  252,062

Date of acknowledgment: February 28, 2018

File number: M.F. 913/2017 (G-6) 11030

Owner: Nike Innovate C.V.

Gazette: February 2018

Status: Live

B.77. Trademark: “INNOMINADA” (Nike’s checkmark logo)

Trademark registration number: 797,100

Date of acknowledgment: February 28, 2018

File number: M.F. 914/2017 (G-7) 11033

Owner: Nike Innovate C.V.

Gazette: February 2018

Status: Live

B.78. Trademark: “LAS MOMIAS DE GUANAJUATO”

Trademark registration number: 1,634,161

Date of acknowledgment: March 20, 2018

File number: M.F. 279/2017 (G-4) 3401

Owner: Municipio de Guanajuato

Gazette: March 2018

Status: Live

B.79. Trademark: “SUAVITEL”

Trademark registration number: 415,924

Date of acknowledgment: April 27, 2018

File number: M.F. 2707/2016 (G-9) 27373

Owner: CPIF Venture, Inc.

Gazette: April 2018

Status: Live

B.80. Trademark: “COFLEX”

Trademark registration number: 836,301

Date of acknowledgment: April 30, 2018

File number: M.F. 509/2017 (G-5) 6252

Owner: Coflex, S.A. de C.V.

Gazette: April 2018

Status: Live

B.81. Trademark: “MERCK”

Trademark registration number: 85,741

Date of acknowledgment: April 30, 2018

File number: M.F. 1823/2017 (G-10) 19853

Owner: Merck KGAA

Gazette: April 2018

Status: Live

B.81. Trademark: “KIDZANIA”

Trademark registration number: 810,047

Date of acknowledgment: April 30, 2018

File number: M.F. 291/2018 (G-2) 2544

Owner: Kidzania, S.A.P.I. de C.V.

Gazette: April 2018

Status: Live

B.82. Trademark: “THE HOME DEPOT”

Trademark registration number: 382,465

Date of acknowledgment: May 29, 2018

File number: M.F. 2136/2017(G-11) 22554

Owner: Home Depot International, Inc.

Gazette: May 2018

Status: Live

B.83. Trademark: “BONAFONT”

Trademark registration number: 420,754

Date of acknowledgment: May 31, 2018

File number: M.F. 2680/2017 (G-15) 27444

Owner: Bonafont, S.A. de C.V.

Gazette: May 2018

Status: Live

B.84. Trademark: “BODEGA AURRERA”

Trademark registration number: 1,174,787

Date of acknowledgment: May 31, 2018

File number: M.F. 3278/2017 (G-17) 33470

Owner: Wal-Mart de México, S.A.B. de C.V.

Gazette: May 2018

Status: Live

B.85. Trademark: “AXA”

Trademark registration number: 1,740,983

Date of acknowledgment: June 28, 2018

File number: M.F. 3232/2017 (G-16) 32897

Owner: Axa

Gazette: June 2018

Status: Live

B.86. Trademark: “NUTRISA”

Trademark registration number: 817,447

Date of acknowledgment: June 29, 2018

File number: M.F. 1522/2017 (G-9) 17197

Owner: Nutrisa, S.A de C.V.

Gazette: June 2018

Status: Live

B.87. Trademark: “LALA” (& Design)

Trademark registration number: 1,522,214

Date of acknowledgment: July 23, 2018

File number: M.F. 478/2018 (G-3) 5740

Owner: Comercializadora de Lácteos y Derivaos S.A. de C.V.

Gazette: July 2018

Status: Live

B.88. Trademark: “ZARA”

Trademark registration number: 400,136

Date of acknowledgment: September 27, 2018

File number: M.F. 133/2018 (G-1) 599

Owner: Industrial de Diseño Textil, S.A. (Inditex S.A.)

Gazette: September 2018

Status: Live

B.89. Trademark: “CAGUAMA”

Trademark registration number: 570,851

Date of acknowledgment: October 29, 2018

File number: M.F. 1922/2018 (G-14) 21171

Owner: Cervezas Cuauhtémoc Moctezuma, S.A. de C.V.

Gazette: October 2018

Status: Live

B.90. Trademark: “SONORA GRILL”

Trademark registration number: 1,933,263

Date of acknowledgment: October 30, 2018

File number: M.F. 1990/2018 (G-16) 22204

Owner: Ricardo Añorve Martinez

Gazette: October 2018

Status: Live

B.91. Trademark: “AMERICAN EXPRESS”

Trademark registration number: 199,952

Date of acknowledgment: October 31, 2018

File number: M.F. 2632/2017 (G-14) 26842

Owner: American Express Marketing & Development Corp.

Gazette: October 2018

Status: Live

B.92. Trademark: “ANDATTI”

Trademark registration number: 1,917,496

Date of acknowledgment: November 29, 2018

File number: M.F. 2170/2018 (G-17) 23685

Owner: Grupo Industrial Emprex, S.A. de C.V.

Gazette: November 2018

Status: Live

B.93. Trademark: “M” (& Design) (Monster logo)

Trademark registration number: 942,216

Date of acknowledgment: November 29, 2018

File number: M.F. 807/2018 (G-5) 8365

Owner: Monster Energy Company

Gazette: November 2018

Status: Live

B.94. Trademark: “MONSTER”

Trademark registration number: 766,635

Date of acknowledgment: November 29, 2018

File number: M.F. 666/2018 (G-4) 7220

Owner: Monster Energy Company

Gazette: November 2018

Status: Live

B.95. Trademark: “PHOTOSHOP”

Trademark registration number: 670,716

Date of acknowledgment: November 30, 2018

File number: M.F. 1200/2017 (G-8) 13779

Owner: Adobe System Incorporated

Gazette: November 2018

Status: Live

B.96. Trademark: “MASSIMO DUTTI”

Trademark registration number: 627,417

Date of acknowledgment: December 17, 2018

File number: M.F. 1144/2018 (G-6) 12420

Owner: Grupo Massimo Dutti, S.A.

Gazette: August 2009

Status: Live

B.97. Trademark: “ELD ESCUELA LIBRE DE DERECHO” (& Design)

Trademark registration number: 711,239

Date of acknowledgment: December 19, 2018

File number: 1964/2018 (G-15) 21884

Owner: Escuela Libre de Derecho

Gazette: November 2011

Status: Live

B.98. Trademark: “PARAMETRÍA DE FRANCISCO ABUNDIS

Trademark registration number: 1,858,409

Date of acknowledgment: December 19, 2018

File number: M.F. 1887/2018 (G-12) 20974

Owner: Parametría S.A de C.V.

Gazette: December 2018

Status: Live

[1] The applicant did not answer the office actions and the applications were abandoned.

La entrada Trademarks acknowledged as well-known and famous in Mexico as to 2018 se publicó primero en Reyes Fenig.

Mexico joined the Madrid Protocol on November, 2012, and started accepting international registrations on February, 2013 (read our article about the accession of Mexico to the Madrid Protocol).

The Madrid Protocol is not perfect and applicants may find problems with the simultaneous examination of trademarks in different countries but, in general, I think it has proven to be a successful tool for international businesses.

Some countries’ legislation may provide specific burdens on right-holders of domestic and international registrations, forcing them to prepare additional filings to maintain the trademark rights in those countries.

The new Federal Law for the Protection of Industrial Property entered in force on November 5, 2020. It provides the filing of a declaration of actual and effective use. Such a declaration was added to the Mexican legislation since May, 2018.

The burden of filing the declaration of actual and effective use will impact, sooner or later, all trademark owners in Mexico, including owners of Madrid international trademark registrations.

The declaration of actual and effective use is due on two different moments:

1) Declaration of use after three years of registration.

The owners of trademark registrations issued on August 10, 2018, and thereafter, must file a declaration of actual and effective use, after the third anniversary of issuance of the registration. In the case of Madrid applicants, the filing is due after the third anniversary of granting of protection in Mexico (read our post about the new declaration of use).

The statutory term to file the declaration of use is very short: three months only, counted from the date the trademark registration (or the granting of protection of the international trademark registration in Mexico) becomes three years old.

One declaration is due per domestic registration. In the case of Madrid international trademark registrations, if the protection in Mexico was granted in more than one Class, one declaration of use is due in each Class; the Mexican Patent and Trademark Office (MPTO) assigns one separate Mexican registration number for each Class of products or services comprised in the International Registration. Further, each declaration of use has to be filed electronically or at the window of the MPTO by a local attorney authorized with a power of attorney. A government fee (about US$85.00) has to be paid with each declaration of use.

Failure to file the declaration of actual and effective use would result in the cancellation of the Mexican trademark registration or international registration, in full or in the Class where the declaration of use was not filed.

Furthermore, the protection in Mexico of the international registration shall be maintained only for the goods or services stated in the declaration(s) of actual and effective use.

2) Declaration of use when renewing.

A declaration of actual and effective use is required for all domestic trademark renewal applications filed on or after August 10, 2018.

In the case of Madrid International Trademark Registrations, a declaration of actual and effective use is due if filed on or after August 10, 2018. Given that it would be very difficult to file the declaration of use and the fee when filing the renewal with the World Intellectual Property Organization (WIPO), the MPTO will issue an office action, requesting the declaration of use and the fee[1]. We do not know if the MPTO will serve the office action through WIPO or if it will notify it through the Official Gazette.

One declaration of use per Class involved in the International Registration is due, and it has to be filed electronically or at the window of the MPTO by a local attorney. A government fee (about US$85.00) must be paid with each declaration of use, regardless any fee paid at WIPO with the renewal application.

The protection in Mexico shall be maintained only for the goods and/or services stated in the declaration(s) of actual and effective use.

[1] Under the old Industrial Property Law, the owner of the International Registration had three months to file the declaration of use, counted from the date WIPO notified the renewal, with no requierement from the MPTO. The notices that WIPO received from the MPTO explaining these, back then, new burden, may be reviewed here and here.

La entrada Madrid users, be warned: Renewing the International Registration is not enough in Mexico (Update 2020) se publicó primero en Reyes Fenig.

Civil actions for indemnification of damages due trademark and patent infringement are unusual if compared with the number of administrative infringement actions. The main statutory provisions regarding payment of damages are articles 221 and 221 Bis of the Industrial Property Law, enacted in 1994.

Section 221 Bis of the Industrial Property Law states that the amount of the indemnification due violation of the rights stipulated in the statute shall be no less than the equivalent of 40% of the retail price of the goods or services sold or rendered in violation of such rights. The claim for damages has to be filed with a court of common jurisdiction.

A landmark decision was the 2004 jurisprudencia or binding precedent 1a./J. 13/2004[1] from the Mexican Supreme Court (MSC). The binding precedent was a consequence of contradictory decisions issued by lower court, namely, if it was necessary to have a final infringement decision issued by the Mexican Patent and Trademark Office (MPTO) as a prerequisite to file a civil action for damages (read our article  Damages claims due patent and trademark infringement).

After the binding precedent 1a./J. 13/2004, the MSC has issued a handful of decisions in about the civil action of indemnification of damages associated to patent and trademark infringement (copyright too), none of them binding. From the decisions of the MSC, I have extracted a few basic guidelines:

a) It is necessary to have a final infringement decision from the MPTO before filing a civil action for indemnification of damages.

b) The court where the civil lawsuit has been filed cannot review the MPTO’s decision about the infringement.

c) The plaintiff has to prove, in the trial, that the infringement caused actual damages.

d) The plaintiff must also prove the cause-effect relation between the infringement and the actual damages.

e) Civil actions for damages that involve trademark or patent rights originated from a contractual dispute (such as a breach of a license agreement), or that are not related to a cause of administrative infringement (i.e. a criminal case), do not require a previous infringement decision from the MPTO.

Issues identified as a), b), c) and d) were stated in the 2004 binding precedent from the MSC. As a consequence, and until very recently, I thought there would be little controversy about them in indemnification cases associated to trademark and patent infringement.

On December 2017, the Judicial Journal of the Federation published a non-binding decision from the MSC, regarding the constitutional validity of article 221 Bis of the Industrial Property Law[2]. Basically, the MSC ruled that the lack of identification of the specific industrial property rights that, if infringed, would allow the claim of payment of damages provided by article 221 Bis of the Industrial Property Law, does not make the statutory provision unconstitutional.

Of course, the precedent of the MSC was very important, and confirmed the standing of the Court on different technical issues (namely the ones identified as a), b), c) and d) above) around the action for indemnification of damages because of patent and trademark infringement. However, making a little research, I found that the underlying civil case (from 2013) was even more interesting because the lower tribunal colegiado or court of appeals disagreed with some critical positions that the MSC has adopted since 2004 in different decisions.

Because of a number of technical reasons, the MSC did not review the merits of the underlying civil case in the decision published in 2017, only the constitutionality of article 221 Bis of the Industrial Property Law.

The underlying civil case was decided by the Octavo Tribunal Colegiado en Materia Civil del Primer Circuito or Eight Panel of the Federal Court of Appeals in Mexico City (Eight Panel)[3] on May 8, 2013. (Update February 27, 2019: The case number was D.C. 153/2013. The public version of the full decision (in Spanish) may be downloaded here).

The Eight Panel ruled that the precedent 1a./J. 13/2004 of the MSC was binding only about having a final infringement decision from the MPTO as a prerequisite for a civil action for indemnification of damages. Other questions stated in the precedent are just “orientations” (unfortunately the Eight Panel did not state a statutory provision, precedent or legal theory supporting the ruling).

Therefore, the Eight Panel decided that, on a damages case based on section 221 Bis of the Industrial Property Law, the plaintiff does not have to prove actual damages or the cause-effect relation between the infringement (previously declared by the MPTO) and the actual damages. The plaintiff only has to prove the amount of the sales at retail price of the infringing product/service, and calculate the equivalent to 40% in order to obtain the amount that, as a minimum, the plaintiff has the right to collect as indemnification from the infringer/defendant.

If other federal panels and state courts follow the Eight Panel’s example, we may see in the next years a revival of successful lawsuits for indemnification of damages due to patent and trademark infringement in Mexico. It will also be interesting to see if the MSC will have something to say about the non-binding “orientations” that the Eight Panel and potentially other courts will start finding in the binding precedents of the MSC.

[1] “PROPIEDAD INDUSTRIAL. ES NECESARIA UNA PREVIA DECLARACIÓN POR PARTE DEL INSTITUTO MEXICANO DE LA PROPIEDAD INDUSTRIAL, SOBRE LA EXISTENCIA DE INFRACCIONES EN LA MATERIA PARA LA PROCEDENCIA DE LA ACCIÓN DE INDEMNIZACIÓN POR DAÑOS Y PERJUICIOS”, at Semanario Judicial de la Federación y su Gaceta, Ninth Period, Vol XIX, May 2004, page 365 (Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=1a.%2FJ.%252013%2F2004&Dominio=Rubro,Texto&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=181491&Hit=1&IDs=181491&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=. Date of review: January 14, 2019).

[2] “PROPIEDAD INDUSTRIAL. EL ARTÍCULO 221 BIS DE LA LEY RESPECTIVA NO CONTRAVIENE EL PRINCIPIO DE SEGURIDAD JURÍDICA” at Semanario Judicial de la Federación, Décima Época, Book 49, Vol I, December 2017, page 437 (Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=%25202015750&Dominio=Localizacion&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=2015750&Hit=1&IDs=2015750&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=. Date of review: January 19, 2019).

[3] While all decisions from the different federal courts and panels are of public record and everybody may request a copy (with personal information redacted), not all decisions are published as precedents. It is up to each court and panel deciding if the case is relevant enough to be published in the Judicial Journal of the Federation. The decision of the underlying civil case rendered by the Eight Panel on May, 2013, was not published. (Update February 27, 2019: You may download the public version of the full decision (In Spanish) here)

La entrada Damages claims due infringement of trademarks and patents in Mexico. Who has the final saying? se publicó primero en Reyes Fenig.

As I reported in an earlier post (see Mexico starts a new era in Trademark Law (the amendments of May, 2018)), last May 18, 2018, the Official Journal of the Federation published important amendments to the Mexican Industrial Property Law, particularly in the field of trademarks. The amendments became in force on August 10, 2018.

In general, the changes had a favorable reception. However, some amendments were not welcome. One of the changes, that I did not like, refers to the reintroduction of the burden of filing a declaration of actual and effective use of the trademark after the third anniversary of issuance of the registration, in order to keep it alive.

As background, the Trademarks and Inventions Statute of 1976 stated that trademark owners had to file a statement and evidence of use after the third year of registration, and again when renewing. This burden was deleted in the 1991 Industrial Property Law (See Is it neccesary to file evidence of use of a trademark in Mexico to keep it alive?). Now, almost 27 years later, it reappears.

The amended articles 128 and 152, paragraph III, of the Industrial Property Law, provide that the owner of a trademark registration must file a statement of actual and effective use of the trademark after three years of registration. The window to file the statement is three months, counted from the date of the third anniversary of issuance of the registration. Failure to file the statement of actual and effective use of the registered trademark would result in the ipso iure abandonment of the registration.

If the trademark registration lists goods or services different from the ones that have been actually identified with the trademark in Mexico, the declaration of use may not be filed and the registration will become abandoned too.

The burden to file the statement of actual and effective use affects owners of nationally filed trademark registrations and owners of Madrid International Registrations, if the registration or declaration of protection in Mexico were issued on August 10, 2018, and thereafter.

(Update March 7, 2019: The declaration of actual and effective use is also due when renewing the local trademark registration or the international trademark registration. Read more here.)

(Update March 14, 2019: Applicants must be careful when filing the declaration of actual and effective use, either at the third year of registration or when renewing; the coverage of the trademark registration shall be limited to the goods or services stated in the declaration of use, although it is questionable whether such a limitation is legal.)

The reasons behind the new burden to file a statement of actual and effective use are unclear, but the Mexican Patent and Trademark Office will charge a government fee of about US$75.00 for each declaration of use filed.

Although it is evident that the new burden will apply to Mexican trademark registrations issued on August 10, 2018, and thereafter, there are concerns about the possible ex post facto enforcement of the amended stipulations to trademark registrations issued before August 10, 2018, especially the ones issued after August 10, 2015. Some lawyers say that amended articles 128 and 152, paragraph III of the Industrial Property Law may be applied ex post facto, thus if trademark owners of registrations issued after August 10, 2015, do not file the statement of actual and effective use, the registration will become abandoned. Of course, these lawyers are sending communications advising owners of registered trademarks issued between August 10, 2015, and August 10, 2018, to file the statement of use.

In my opinion, there are no grounds to claim that amended articles 128 and 152, paragraph III, of the Industrial Property Law may be enforced ex post facto.

Article 14 of the Constitution states, as a rule, that no law shall be enforced ex post facto. There are two exceptions:

1. If the new law expressly provides that it shall be enforced ex post facto, as some precedents explain[1]. If such an ex post facto enforcement of the law harms an acquired right (opposed to a potential right), it may be declared unconstitutional. If it benefits the recipient of the law, then it would be a valid ex post facto enforcement.

In the case of amended articles 128 and 152, paragraph III, of the Industrial Property Law, there is no stipulation in the amended statute or transitory provisions, allowing the ex post facto enforcement of any of the amended articles. Therefore, no amended provisions, especially the ones regarding the burden to file a declaration of use, may be applied ex post facto to trademark and slogan registrations issued before August 10, 2018.

2. The second exception that allows the ex post facto application of a law is that the amended provisions improve the general civil rights of a person, or benefits a person subject to a punitive criminal, tax or administrative procedure. Only in these cases, an amended provision may be enforced ex post facto even if the law does not expressly authorized such an application.

Enacting a statutory provision stating a new burden to trademark owners to keep the registration alive, with nothing in return, is not a benefit and does not improve anything for rights holders, so I fail to see how amended articles 128 and 152, paragraph III, of the Industrial Property Law may be automatically enforced ex post facto.

Finally, Transitory Article Two of the amended provisions states that trademark applications and oppositions filed before the amendments became enforceable (August 10, 2018), shall be prosecuted and decided according to the statutory provisions in force when the application was filed.

The above is actually a relevant provision, even if it is unrelated to the burden of filing a statement of actual and effective use of the registered trademark. Unlike substantive rights, parties in a procedure do not have acquired rights for future actions and terms within the procedure; amendments to procedural laws cause that the amended provisions become applicable to ongoing examinations, unless otherwise stipulated in the statute. Without Transitory Article Two, ongoing trademark and slogan application procedures would have continued under the new amended procedural rules, and that could have been messy. Transitory Article Two allows the MPTO to continue the examination of applications filed before August 10, 2018, under the old rules.

In summary, I believe that there is no reason to state that the filing of a statement of actual and effective use of a Mexican registered trademark, when it becomes three years old, is compulsory for trademark registrations issued before August 10, 2018, in order to avoid the ipso iure abandonment. However, the statement of actual and effective use (and the government fee associated with such a statement) will have to be filed simultaneously with the renewal, regardless if the registration was issued before or after August 10, 2018.

I think that the reason why some colleagues are advising clients to file statements of use, in spite that their trademarks were issued before August 1, 2018, is that many lawyers do not fully understand what the ex post facto application of the law is and how it works.

[1] “RETROACTIVIDAD DE LA LEY”, at Semanario Judicial de la Federación, Quinta Época, Tomo VI, page 726; “RETROACTIVIDAD DE LA LEY (TEORÍA DE LOS DERECHOS ADQUIRIDOS) (LEGISLACIONES DEL DISTRITO FEDERAL Y DE YUCATÁN)”, at Semanario Judicial de la Federación, Quinta Época, Tomo LXXVIII, page 2435; “RETROACTIVIDAD. CUANDO ES JURIDICA LA APLICACION RETROACTIVA DE LA LEY”, at Semanario Judicial de la Federación, Quinta Época, Tomo CXXXII, page 304.

La entrada The new statement of use of registered trademarks in Mexico se publicó primero en Reyes Fenig.