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.

As a rule, a trademark registration is not enforceable against a third party that started using, in Mexico and in bona fide, a trademark identical or confusingly similar to the registered one, to identify the same or similar products or services, if such use started before the filing date in Mexico. Claiming a date of first use in the application creates an exception to the rule.

Further, as a rule, Mexican registered trademarks may be invalidated on grounds of earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark to identify the same or similar goods or services, provided that such use started before the filing date in Mexico and has been continuous[1]. Claiming a date of first use in the application creates an exception to the rule.

The claim of the date of first use in the trademark application does not have consequences before the issuance of the trademark registration. Mexico does not demand use of the trademark to issue the registration and claiming a date of first use would not expedite the examination of the application.

After the issuance of the Mexican trademark registration, if the registrant claimed a date of first use in the application, the resulting registration would be enforceable against a third party using an identical or confusingly similar trademark in Mexico identifying the same or similar goods or services, even if such use started before the filing date in Mexico. Only if the use began before the date of first use stated in the application, then the trademark registration would not be enforceable against said third party.

As I said before, the rule is that a Mexican trademark registration may be invalidated due earlier and continuous use in Mexico or abroad if the use started before the filing date in Mexico. However, as an exception, if the registrant claimed a date of first use in Mexico in the application, then the plaintiff in the invalidation action would have to prove that it started the continuous use in Mexico or abroad before the date of first use stated in the application, instead of the filing date in our country.

Stating a date of first use has an important downside. The Mexican Industrial Property Statute stipulates that a trademark registration may be invalidated if it was issued using false information stated in the application. Although I am not aware of any statistics available, most of the invalidation actions I have filed on grounds of false information in the application, were related to the date of first use stated in the trademark application. The Mexican Patent and Trademark Office and the courts had consistently decided that the plaintiff did not have the burden of proof to demonstrate that the date of first use stated in the application was false; it was the trademark owner who had to demonstrate the truthfulness or accuracy of the date of first use. Considering that affidavits of use have almost no value as evidence in Mexico, proving that the applicant did not lie when stating a date of first use could be very difficult, especially in cases when the date of first use was several years old.

According to the statute of limitations, the vulnerability of a registered trademark against an invalidation action due false information stated in the application has to be filed within a five-year term after the publication of the trademark registration in the Official Gazette.

As you may imagine, stating a date of first use in a trademark application could become a dangerous trap and a potential risk of invalidation.

Some judges did some isolated efforts to moderate the rigor of the cause of invalidation provided in the statute. For example, there was an old isolated precedent from 1990 that provided that the invalidation on grounds of false information stated in the application, namely the date of first use, should only be declared if the plaintiff proves that the trademark owner obtained an unfair advantage from such a date of first use claim or that the first use claim could cause an unfair competition situation. However, other judges not only did not follow the precedent, but most of them affirmed the opposite position.

Things changed recently. On July 2016, a panel of judges issued a binding precedent about the invalidation action on grounds of false information stated in the application[2]. The precedent basically states that, in a cancellation action claiming that the date of first use stated in the trademark application was false, the burden of proof to demonstrate that the date of first use on a trademark application was false is on the plaintiff.

The precedent will dramatically reduce the chances of getting a trademark registration invalidated due a false or inaccurate date of first use; it seems extremely difficult to prove that someone was not using a trademark in the date it stated I the application. Therefore, the plaintiff has to prove that it was materially or legally impossible for the trademark owner to start using the trademark in the date stated in the application. Other than the above, the plaintiff may file evidence suggesting that a date of first sue is false, but not an actual direct proof.

The precedent was not free of controversy, because of the technicalities it implied. A significant number of judges in the panel disagreed, and one of them even prepared a very interesting minority report.

In any case, claiming a date of first use now seems much safer for trademark applicants and owners than it was just a few months ago. The precedent could be fair for trademark owners, but it may also lead to illegitimate claims with dangerous consequences (read my post The relevance of the date of first use in Mexican trademark applications)

One question that remains to be solved is if this precedent may be applied to invalidation cases that started before the publication of the precedent. The Amparo Statute provides that binding precedents from the federal courts of appeals or the Supreme Court may not be retroactive. I think the provision prevents the federal courts of appeals and the Federal Court of Administrative Affairs from using the precedent to decide appeals filed after July 1, 2016. However, I believe the Mexican Patent and Trademark Office may start ruling cases using this new binding precedent, no matter when they were filed.

[1] It is not required to prove that the plaintiff’s trademark is well-known in Mexico; earlier and continuous use of the mark in any country is enough. The statue of limitations provides that such an invalidation action has to be filed within the third anniversary of publication of the issuance of the Mexican  trademark registration in the Official Gazette.

[2] “NULIDAD DE REGISTRO MARCARIO. CUANDO SE ALEGA LA FALSEDAD DE LA FECHA DEL PRIMER USO DE LA MARCA, CORRESPONDE AL ACTOR LA CARGA DE ACREDITAR LOS HECHOS CONSTITUTIVOS DE SU ACCIÓN”, at Semanario Judicial de la Federación, Volume II, No. 32, July 2016, page 1445. benefit-from-new-binding-ruling-precedent.

La entrada New binding ruling benefits owners of trademarks registered in Mexico that claimed date of first use. se publicó primero en Reyes Fenig.

There seems to be an increasing number of cases related to three-dimensional trademark applications, resulting in new precedents related to these marks. In 2009, the Fourth and Ninth Courts of Appeals in Mexico City published a couple of precedents** regarding the requirements that three-dimensional trademarks must fulfill to be registrable in Mexico. Further, the Specialized Chamber in IP Matters of the Federal Court of Tax and Administrative Affairs published a precedent*** regarding the scope of rights provided by the registration of three-dimensional marks.

There have been a lot of discussions about the requirements to register three-dimensional trademarks, not only in Mexico but in many other countries and regions. On one side, companies and business are trying to differentiate themselves from competitors not only by developing new packages and containers and registering them as trademarks, but also by attempting to protect the shape of their products by registering them as a trademark. On the other side, there is a clear tendency of many Trademark Offices -including the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO)- to reject the registration as a trademark of the three dimensional shape of an object when the shape has a functional character.

This post will be mainly about the possibility of registering the three-dimensional shape of a product as a trademark in Mexico.

In the first place, there is no doubt that Mexican law allows the registration, as a trademark, of the shape of a product. Section 89, paragraph II of the Industrial Property Statute stipulates that three-dimensional trademarks may be registered in Mexico; and section 53 of the Rules of the Industrial Property Statute explicitly provides that the shape or presentation of a product may be registered as a trademark, among other three-dimensional marks such as packages and containers.

Notwithstanding the above, not all three-dimensional marks can be registered. Section 90, paragraph III of the Industrial Property Statute prohibits the registration of “three-dimensional shapes that are of public domain or that have become of common use, and that do not have originality to make them easily distinguishable, as well as the usual and common shape of the products and the one imposed by its nature or industrial function”.

Therefore, the shape of a product is registrable as a trademark, if: (i) such shape is original enough to allow it to make it easily distinguishable, (ii) it is not of public domain; (iii) it has not become of common use; (iv) it is not the usual and common shape of the product to be identified by the mark and; (v) it is not imposed by the nature or industrial function of the product.

With some many “if’s”, obtaining the registration of the three-dimensional shape of a product can be extremely difficult in Mexico. In the case of the shape of a product, no matter how original it may be, I cant’ imagine a design completely voided of functional characteristics, and the presence of a functional characteristic may be a cause of rejection of the trademark application.

Of course I am not saying that it is impossible to secure IP rights for the shape of a product. Industrial design registrations are often used to secure exclusivity rights for the shape of products. The issue I want to raise is directed to the trademark aspect of three-dimensional form of a product, and if it is actually possible to register it as a trademark while avoiding all the restrictions that the statute provides.

For example, in the field of industrial designs, it is possible to register the three-dimensional design of a light bulb, provided that the design is new and substantially ornamental. I highlight the expression ‘substantially’ because under Mexican law three-dimensional industrial designs have always to be referred to a specific industrial product. Therefore there has to be a minimum or tolerable degree of functionality in the design; otherwise, there would be no industrial product at all to apply the design to. In any case, it is clear that the exclusivity rights that the design registration provides do not include the functional or technical characteristics of the product or design.

However, in the field of trademarks, the shape of a light bulb, no matter how original and distinctive it might be, has to be determined in some degree by its nature and function. A complete absence of functionally in the product’s shape would result in a useless product or in no product at all.

Therefore, the consequence of claiming that the shape of a product has to be absolutely voided of functional characteristics in order to be registrable as a three-dimensional trademark (in my opinion, this has been the MPTO’s position in the last years) would be that, in practice, it is not feasible to obtain trademark protection for the three-dimensional design of a product itself, no matter what the statute or its rules provide whatsoever.

I believe that the current position of Mexican authorities about the registration as trademark of the shape of products is too dogmatic, even against the law.

In an effort to avoid the rejection of applications for the three-dimensional marks on grounds of functionality or lack of distinctiveness, some applicants added literal and figurative elements to the three-dimensional mark subject of the application. These three-dimensional trademark cases with additional bi-dimensional elements included containers (the precedents from the Fourth and Ninth Courts of Appeal in Mexico City make specific reference to the shape of containers) and shapes of products.

The main argument behind adding intrinsically distinctive literal and figurative features to the three dimensional trademark was that the trademark must be analyzed as a ‘whole’, without splitting its bi-dimensional and three-dimensional elements (“The whole is other than the sum of its parts”). The applicants claimed that, if as a result of the examination of the trademark as a ‘whole’, it was reasonable to conclude that the shape of the product or container plus the literal and figurative bi-dimensional elements, allows an average consumer to distinguish the product from other of the same kind, then the trademark is registrable, and the exclusivity rights would comprise the three-dimensional design and the literal and figurative elements.

Eventually, different courts of appeals issued contradictory decisions. The contradictions caused the intervention of the Supreme Court and the publication of a binding precedent in April 2010.

Basically, the Supreme Court ruled that there was no obstacle for the filing of a trademark application for a three-dimensional mark that also includes literal or figurative elements. However, the decision also provides that the examination of the registrability of such a trademark must be conducted in two stages. In the first stage, the examiner must consider the three-dimensional aspect of the mark only, excluding the bi-dimensional features. If the conclusion of the examiner is that the three-dimensional trademark is registrable, then he/she may start the second stage of the examination and consider the literal and/or figurative aspects of the trademark.

The decision expressly states that if the three-dimensional feature of the mark is not intrinsically registrable, then the trademark application must be rejected, without need of considering the bi-dimensional elements that the trademark may include.

The decision of the Supreme Court only provides guidelines about the examination of three-dimensional trademarks. It does not provide any restriction about the intrinsic registrability of the shape of a product as a trademark.

Personally, I am against to the two-stage examination of three-dimensional trademarks provided in the Supreme Court’s decision. However, it is a binding precedent that confirms the way the MPTO has examined three-dimensional trademarks in the last years. Therefore, it is most likely that the somehow hostile approach to this kind on non-traditional trademarks (especially to the ones that protect the shape of products) will continue in Mexico.
* Judicial Journal of the Federation, Ninth Era, XXXI, April 2010, page 430.

** Judicial Journal of the Federation, Ninth Era, XXIX, January 2009, page 2769; and Judicial Journal of the Federation, Ninth Era, XXIX, March de 2009, page 2811.

*** Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Year II., No. 24, December 2009, page 259.

La entrada The Mexican Supreme Court provides guidelines about examination of three-dimensional trademarks se publicó primero en Reyes Fenig.

The purpose of this post is offer a basic explanation about precedents in Mexico and their effectiveness in IP-related cases.

When I say “precedent”, I am referring to a published decision issued either by one of the salas or chambers of the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA), a tribunal colegiado de circuito court of appeals or the Supreme Court. It does not mean that there are no precedents from the MPTO. The MPTO is the first instance in most patent and trademark infringement or invalidation cases, so of course there are precedents, but they are not reported or collected. Mexican lawyers learn about the precedents of the MPTO from our own experience and interchange of ideas with other lawyers and sometimes with the MPTO’s officials. Although the MPTO does not have to follow its own precedents, it always has to state the statutory provisions applicable in each case and explain the reasons of all the decisions it issues.

About the decisions of the courts, it is necessary to distinguish different situations.

First. All the decisions from the federal courts (Mexico is a federal republic, so there are also state courts; the availability of decisions from state courts vary from state to state) become public shortly after they are issued, although the information about the involved parties may not be available in most cases. This situation makes it difficult locating certain decisions if you do not have information about the case number and the court that issued the decision you are looking for.

Second. The decisions of the juzgados de distrito or federal district courts and tribunals unitarios de circuito or higher federal courts are not reported or collected, thus there are almost no references to district courts or higher federal courts as source of precedents.

Third. When a court of appeals, a chamber of the FCTAA or the Supreme Court considers that the legal issues involved in a case are particularly relevant, it may decide to prepare an abstract about the ruling (we call it tesis) and publish it in a collection of precedents issued every month: the Semanario Judicial de la Federación or Weekly Judicial Journal of the Federation (it is no longer weekly, but it kept the name) in the case of the courts of appeals and the Supreme Court, and the Revista del Tribunal Federal de Justicia Fiscal y Administrativa or Journal of the Federal Court of Tax and Administrative Affairs in the case of the chambers of the FCTAA. These published rulings constitute the precedents.

The abstract of the ruling includes the identification of the issuing court and the case number, so it is relatively easy to obtain a copy of the actual decision and get a deeper knowledge about the reasoning behind the precedent.

In a broad sense, the collection of published precedents is called jurisprudencia; in a more restrictive and technical sense, only the binding precedents are jurisprudencia. Jurisprudencia is often translated into English as ‘jurisprudence’, although the concept is much narrower under Mexican law.

Fourth. In general terms, a precedent becomes binding or jurisprudencia when the ruling has been confirmed in five consecutive decisions –in the case of courts of appeals and the Supreme Court-. A decision may also become binding when different courts of appeals, or the two specialized chambers of the Supreme Court, render contradictory rulings about the same legal issue and the Supreme Court decides which ruling must prevail.

In the case of the FCTAA, it is divided in different chambers of three judges each. There is one chamber specialized in intellectual property matters that decides most appeals against the decisions of the MPTO and the Mexican Copyright Office. The specialized chamber of the FCTAA may publish precedents, but only the precedents of the Highest Chamber of the FCTAA may become binding, if and when a ruling has been confirmed by three or five consecutive decisions, or when it decides the prevailing ruling in the case of contradictory decisions between different chambers of the FCTAA.

Fifth. A precedent may become binding for lower courts, but not for higher or equal-ranked courts. The binding precedents from the Supreme Court and the courts of appeals are binding for all the chambers of the FCTAA.

The MPTO is not a court (even if it acts like one in infringement and invalidation cases) but an administrative entity. Therefore, the MPTO has no actual obligation to follow the binding precedents issued by the courts, although it usually tries to adjust its decisions to such binding rulings.

Further, it is very usual in the Mexican practice –the MPTO, courts and lawyers included- to rely on the authority of some non-binding precedents to justify decisions, opinions and claims.

La entrada A general view about precedents in Mexico se publicó primero en Reyes Fenig.

For many years, a usual complaint from patent owners of pharmaceutical products was that the Mexican FDA –Comisión Federal para la Protección contra Riesgos Sanitarios, better know by its acronym COFEPRIS- was encouraging patent infringement by issuing marketing authorizations for patent-infringing drugs.

On 2003, the President amended the Reglamento de la Ley de la Propiedad Industrial or Rules of the Industrial Property Law and the Reglamento de Insumos para la Salud or Rules for Health Supplies to create a “link” between the Mexican Patent and Trademark Office (MPTO) and the Mexican FDA.

According to the amended Rules of the Industrial Property Law, the MPTO must publish every six months an updated list of patented drugs, identified by the name of the active ingredient. The list must include the names of the patentee and recorded licensee (if any), the term of the patent, among some other information about the protected drug. The idea of the list, widely known as the “List of Patented Medicines”, is to inform the public, and especially the Mexican FDA, about the existence of patent rights on certain active ingredients.

On the other hand, according to the amended Rules for Health Supplies, when filing an application with the FDA for marketing authorization of a drug, the applicant must state either there is no patent protection for the drug, or that it is the patent holder or recorded licensee. The Mexican FDA has to review the List of Patented Medicines and even verify with the MPTO to make sure that there would be no patent infringement if it grants the marketing authorization to the applicant. If necessary, the Mexican FDA will request the applicant to provide evidence that it is the patent owner or that it has a license recorded with the MPTO.

The disputes around the linkage system

It was clear that patents claiming new active ingredients should be included in the List of Patented Medicines, and that patents claiming processes were not to be listed.

However, there were a lot of questions about patents for new compositions or formulations and new uses. The language used when amending the Rules of the Industrial Property Law raised some doubts, although the amended Rules for Health Supplies only considers patents claiming new active ingredients as subject of being included in the List of Patented Medicines.

The original position of the MPTO was that new pharmaceutial formulations and compositions should not be included in the List of Patented Medicines. It did not mean that is was ok to infringe patents claiming new formulations or processes, but that the mechanism provided by the linkage system only benefited patents that claimed new active compounds.

Many innovative pharmaceutical laboratories starting filing amparos or constitutional appeals with the district courts in Mexico City against the lack of inclusion of their formulation patents in the List of Patented Medicines, and in most cases the patent owners prevailed, so the MPTO has been forced to publish several addenda to the List of Patented Medicines to include patents for new formulations and compositions.

Although most federal courts of appeals in Mexico City supported the idea that the  List of Patented Medicines should include patents for new formulations, the Fourth Court of Appeals in Mexico City published a ruling[1], stating that only patents on new active ingredients should be included in the List of Patented Medicines.

The expansion of the linkage system

The contradictory rulings between different courts of appeals caused the intervention of the Supreme Court shortly after the Fourth Court of Appeals in Mexico City published the ruling. On January 2010, the Second Chamber of the Supreme Court, specialized in administrative matters, published binding precedent number 2a./J. 7/2010[2], stating that the List of Patented Medicines should include patents claiming new formulations in a very close decision (3 Judges in favor and 2 Judges against).

n the Mexican system, a binding decision from the Supreme Court is binding for all federal, state and administrative courts in Mexico, but not for the MPTO. Technically, the MPTO could continue refusing to include patented formulations in the List of Patented Medicines and the owners of the excluded patents would have to appeal such exclusions, although such appeals should be decided quicker than before the Supreme Court’s decision.

Notwithstanding the above, the MPTO usually tries to adapt its actions and decisions to the binding precedents of the courts, so I would expect that the MPTO will voluntarily include patents on new pharmaceutical compositions and formulations in the next number of the List of Patented Medicines. The ruling of the Supreme Court did not mention patents for new uses of drugs, and we may exact the MPTO to continue opposing the publication of these patents in the List of Patented Medicines.

(Update September 20, 2018. Several decisions from the federal courts of appeals show that the courts favor the publication of second use patents in the linkage system. No  binding precedent has been issued).

Some downside of the linkage system and its expansion

All measures and mechanisms to improve the protection of patents and prevent the infringement are welcome. However, the linkage system and the expansion ruled by the Supreme Court could lead to unfair decisions.

First, and this has nothing to do with including formulation patents in the List of Patented Medicines, I am against the fact that the Rules for Health Supplies force applicants for marketing authorizations to prove that they are the patent owner or a recorded licensee. Why there should be a license and why it should be recorded? If the applicant for the marketing authorization is just distributor, there is no reason for the parties to execute a license; however the Mexican FDA will still demand evidence that the applicant has a license recorded with the MPTO in order to issue the marketing authorization. From my perspective, the demand stated in the Rules for Health Supplies about the existence of a license recorded with the MPTO shows that neither the Mexican FDA not the MPTO understood the legal consequences of recording a license. It also evidences the extremely formalistic mentality of the Mexican bureaucrats and society in general.

Second, considering the restrictive construction that the MPTO originally made of the amended Rules of the Industrial Property Law about what patents should be included in the List of Patented Medicines, I believe that it was not the original intention of the Administration to benefit formulation patents from the linkage system. I think that the courts have been able to expand the system to formulation patents mainly because the lousy language used in the 2003 amendment to the Rules of the Industrial Property Law.

The fact that the Rules for Health Supplies were amended at the same time than the Rules of the Industrial Property Law and that the Rules for Health Supplies clearly limit the scope of the linkage system to patents claiming an active ingredient somehow confirms the above.

Third, the inclusion of formulation patents in the List of Patented Medicines, although it may be a very effective way to prevent infringement of such patents, it may also cause the rejection of marketing authorizations for drugs that use a formulation different from the one claimed in the patent. Unlike many cases of patents claiming active ingredients, the Mexican FDA may have to interpret the claims of the formulation patent to decide whether the applied drug infringes said claims. This is dangerous, because the Mexican FDA is not a patent expert, and it is unclear whether if the MPTO would be able to provide effective, timely and accurate support in this field.

Does it make sense for a non-innovative country such as Mexico to increase the protection to pharmaceutical patents at the risk of blocking non-infringing drugs?

[1] “PROPIEDAD INDUSTRIAL. LAS PATENTES DE MEDICAMENTOS ALOPÁTICOS QUE DEBEN PUBLICARSE EN LA GACETA RELATIVA, DEBEN SER ÚNICAMENTE AQUELLAS QUE PROTEGEN UNA SUSTANCIA, INGREDIENTE O PRINCIPIO ACTIVO”, at Semanario Judicial de la Federación y su Gaceta, Ninth Era, Tome XXIX, May 2009, page 1092.|

[2] “PROPIEDAD INDUSTRIAL. LAS PATENTES DE MEDICAMENTOS ALOPÁTICOS O SUS REIVINDICACIONES QUE NO CONSTITUYAN PROCESOS DE PRODUCCIÓN O DE FORMULACIÓN DE MEDICAMENTOS Y QUE EN SU COMPOSICIÓN FARMACÉUTICA INCLUYAN UN INGREDIENTE, SUSTANCIA O PRINCIPIO ACTIVO, DEBEN INCLUIRSE EN LA PUBLICACIÓN A QUE SE REFIERE EL ARTÍCULO 47 BIS DEL REGLAMENTO DE LA LEY DE LA PROPIEDAD INDUSTRIAL”, at Semanario Judicial de la Federación y su Gaceta, Ninth Era, Tome XXXI, February 2010, page 135.

La entrada The Mexican Supreme Court expands the linkage system to prevent patent infringement se publicó primero en Reyes Fenig.

The decisions of the FCTAA have made the Mexican Patent and Trademark Office (MPTO) to acknowledge the extension of term of several pipe-line patents, for the same extended term granted to the corresponding foreign patent from which the priority was claimed. Further, the decisions of the Highest Chamber of the FCTAA allowing the extension of term are now binding*. For a more detailed explanation about Mexican pipe-line patents and their extension, you may review the post  The extension of life of patents in Mexico.

In spite of the relatively large number of extended pipe-line patents, all the controversy surrounding the pipe-line patents themselves and their life extensions and that the FCTAA published the first precedent regarding this matter in 2005, neither the Federal Courts of Appeals nor the Supreme Court had published any ruling concerning the term extension of pipe-line patents, until January 2010.

The January 2010 issue of the Weekly Judicial Journal of the Federation publishes a non-binding decision of he First Court of Appeals in Administrative Matters of the First Circuit (based in Mexico City)**. This decision is associated to a final appeal (Amparo Directo) filed by the well-known Mexican pharmaceutical company Probiomed, S.A. de C.V. The decision rules that the term of pipe-line patents, and of all patents in general, cannot be extended whatsoever. This decision is in open conflict with the binding ruling of the FCTAA, and restarts a discussion that I thought was (a few technicalities aside) essentially over, as a consequence of the binding precedent from the FCTAA and because all pipe-line patents, even the extended ones, should expire by mid 2012 (the statute provided that no pipe-line patent could have a term longer than 20 years counted from the filing date in Mexico).

Notwithstanding the above, the decision of the Federal Court of Appeals does not imply an actual change in the way Transitory Article Twelve of the 1991 Industrial Property Statute has been understood, particularly concerning the extension of pipe-line patents.

The decision of the First Court of Appeals in Mexico City is non binding (the binding precedents of the Highest Chamber of the FCTAA are not binding for  the District Courts and Courts of Appeals, only for the different lower Chambers of the FCTAA), so there is no reason for the Specialized Chamber in Intellectual Property of the FCTAA to stop following the binding decision of the Highest Chamber of the FCTAA and continue ordering the MPTO to acknowledge the term extension of pipe-line patents when the foreign patent offices grant the term extension of the foreign patent that corresponds to the claimed priority in the Mexican pipe-line patent.

We have to wait to see if the precedent from the First Court of Appeals in Mexico City causes the intervention of the Supreme Court. The Supreme Court may intervene if there is a contradictory ruling from another Court of Appeals. I believe that at least the first decision of the Highest Chamber of the FCTAA allowing the extension of term of a pipe-line patent (precedent V-P-SS-629, decided on July 7, 2004) was appealed by the MPTO and a Court of Appeals had to decide based on the merits of the appeal (the statute changed in December 2005; since then, most appeals of the MPTO against the decisions of the FCTAA are dismissed).

Not everybody is allowed to demand the intervention of the Supreme Court to decide which of the contradictory decisions held by different courts of appeals is right, but the MPTO can. I hope that the MPTO, or the parties involved in the appeals, will soon demand such intervention of the Supreme Court, so we may have certainty about the validity of the term extension of Mexican pipe-line patents. (Update January 2011: Unfortunately, as a result of some formal flaws in the appeal brief that the MPTO filed against the first decision of the Highest Chamber of the FCTAA of 2004, the Federal Court of Appeals dismissed that appeal without reviewing the merits, thus the intervention of the Supreme Court, will take more time to occur, if ever).

* Jurisprudencia or binding decision VI-J-SS-40. Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Year II, No. 21, September 2009, page 27.

** Isolated precedent published in the Weekly Judicial Journal of the Federation, Ninth Era, Courts of Appeals, XXXI, January 2010, page 2173.

La entrada Mexican courts disagree about the term extension of patents se publicó primero en Reyes Fenig.

The Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA) is a relatively new court. It was enacted in 2001, and its immediate predecessor was the Federal Tax Court. Most of the judges of the FCTAA are tax specialists. However, amendments to several statutes, particularly the modifications of April and May 2000 to the Federal Law of Administrative Procedures, broadened the scope of the old Federal Tax Court to decide a large number of administrative matters, (i.e. trademark registration, public officials liability, environmental protection, mining permits… etc.) until it became the FCTAA in December 2000. 

From mid 2000 to late 2008, appeals regarding IP matters were decided by on the thirteen non-specialized chambers of the FCTAA in Mexico City. Since January 2009, IP appeals are being decided by a specialized chamber, also located in Mexico City. 

The Federal Law of Contentious Administrative Procedures (FLCAP) rules the appeal procedure with the FCTAA. The immediate predecessor of the FLCAP was the contentious chapter of the Federal Tax Code, that governed the appeals with the now extinct Federal Tax Court. 

As you may see, a tax court and a tax law were the predecessors of the current specialized IP Chamber of the FCTAA and of the statute that govern the procedure for appeals involving IP. 

In a typical procedure concerning taxes, there are two parties with opposing interests: the State and the tax payer. The statute that governs the appeals in IP matters took this model. The problem is that in many IP matters, there may be more than one opposing party (such as the proprietor of a registered trademark that was cited as anticipation in a case involving the rejection of a trademark application, or the adversary in a patent invalidation or infringement action). 

At Law School, my Tax Law teacher told us that the purpose of Tax Law was defending tax payers, and many of the provisions (not all) stated in the Federal Tax Code, and later in the FLCAP reflect this way of thinking. Tax law tends to be very formalistic about the decisions and procedures to determine the existence of taxes and liabilities related to unpaid taxes. The lack of fulfillment of a formal or procedural requirement may result in the invalidation of the decision and the procedure, and all the Chambers of the FCTAA must review ex officio that the challenged decision complies with all formal requirements, regardless the arguments of the appellant. 

While such rigor may be desirable in a tax case, it may not be justifiable in a case where the decision of the Mexican Patent and Trademark Office (MPTO) was the result of a “trial-shaped” procedure or did not impose a fine but rejected a trademark or patent application. 

The FLCAP makes no distinction between decisions arising from a purely administrative procedure (such as the abandonment of a patent or the rejection of a trademark application) and decisions rendered as the result of an administrative procedure where the MPTO acted as a court to decide a dispute between two parties, such as a trademark or patent infringement case. 

Therefore, all the rigor that the FCTAA must use to review the compliance of formalities of a tax related decision, regardless the merits of the appeal, are being also applied to review all the decisions from the MPTO. 

The precedents 

A very important issue in Mexican administrative law, and especially in tax law, refers to the authority of the government agencies and the officials to decide taxes, administrative sanctions and impose fines. 

Historically, the government has exercised it power abusively. As a consequence, the Constitution and legislation have provided a number of requirements and limits to protect individuals and private entities from such abuses (whether such protections actually work or if they work only in the benefit of a privileged few would be subject of another discussion). 

One of the above-stated requirements is that the authority of any government agency to impose some burden or extinguishing some right of a private person must be expressly provided in an act of a federal o state legislature (Ley) or in a body of rules issued by the President or Governor himself (Reglamento). 

Certain bodies of rules, such as the estatutos orgánicos or “organizing regulations and the acuerdos delegatorios or “decisions to delegate authority” may provide a government agency with authority for certain actions, but in no case such authority may be broader than the one provided in the legislation or rules, and may not stipulate authority to impose burdens or limit or extinguish rights, if the legislation or the rules did not explicitly stated such authority. 

The requirement for all government officials to have explicit authority provided in the statute or in the rules to decide a case where the official imposes a burden or extinguishes or limits a right does not stop there. There is a binding precedent from the Supreme Court that demands that the official that decides a case must state all the statutes and rules that provide the authority to render the decision, including the article, section, paragraph, subparagraph, etc.** The FCTAA must review this issue ex-officio***, and if it finds one mistake, it must invalidate the decision due lack of authority of the issuing official, even if such lack of authority was never argued by any of the parties, or if it is irrelevant to decide the merits of the case. 

As I explained above, such rigor may be desirable in a tax case, because it has the clear intention of protecting the tax-payer against the abusive behavior of the executive branch. However, in a trademark infringement or cancellation case, this sort of ruling does not result in the enhanced protection of intellectual property rights. On the contrary, it seriously harms intellectual property owners and their activities; the delay of a final decision causes doubts and uncertainty about the enforceability and validity of IP rights, because the effect of the invalidation due apparent or actual lack of authority of the MPTO’s officials is the issuance a new decision signed by an official with authority to do so, or simply correcting the typing flaw that refers to the applicable provision of the statute that originates the authority of such official. 

Of course, given the some voids in the regulations that govern the activities of the MPTO’s officials, the new decision is not always free of formal flaws that may also cause, again, their invalidation, without ever looking at the merits of the appeal. 

Unfortunately, an IP case does not always stop at the FCTAA. The final instance is the Federal Court of Appeals. There are eleven non-specialized courts of appeals with jurisdiction to review the decisions rendered by the IP Specialized Chamber of the FCTAA. The courts of appeals issue contradictory rulings from time to time. When contradictory rulings arise, the Supreme Court may review the cases and decide what ruling should prevail; the Supreme Court’s decisions are binding for all the courts of appeals and the FCTAA. 

Finally, if the patent, trademark or copyright owner wants some indemnification related to a patent, trademark or copyright, the MPTO’s infringement decision must become final (after all the appeals), and then the right-holder may file an action with a court of common jurisdiction, which means to start all over again, but now to try to claim damages and lost of profits. 

The future 

One thing is clear: The current system does not work. Even a relatively simple case may take many years to be decided just because all the time wasted in irrelevant appeals. 

Some practitioners have suggested that the law should be amended to exclude IP from the scope of the FCTAA. Actually there is a bill that the Chamber of Representatives approved in late 2006 to exclude IP from the scope of the Federal Law of Administrative Procedures, and as a consequence, from the FCTAA. The bill is pending at the Senate. 

Although the lack of efficiency of the FCTAA is obvious, I am not sure that this is a good solution. District Courts may decide faster than the FCTAA, but the MPTO’s decisions tend to have many procedural and forma errors that may result in decisions from the District Judges just to cure formal and procedural flaws, with no actual benefit as for the time it takes to reach a final decision would be concerned. 

Finally, most District Judges have not been in regular contact with IP law since 2002, after the FCTAA took over the appeals for IP matters, so their decisions show in general less analysis of the case that the decisions of the FCTAA. 

From my perspective, Mexican IP law needs a structural change. The MPTO should not have authority any long to decide infringement and invalidation cases; such authority should be on specialized federal district courts, which may decide in the same decision if the trademark registration or patent is valid, if it has been infringed and award damages and/or attorney’s fees to the prevailing party.

 Of course, it is a complex issue and any solution would have to be more complex than what I just stated above. In any case, what all practitioners agree is that we need a change, and we have to start working on it now.

 * Ninth Era, Weekly Judicial Journal of the Federation, Courts of Appeals, XXIX, April, 2009, page: 1925, Thesis: I.7o.A.617 A, Registry 167451

 ** Ninth Era, Weekly Journal of the Federation, Supreme Court, Second Chamber, XXV, June 2007, page 287, Thesis: 2a./J. 99/2007

 *** Ninth Era, Weekly Journal of the Federation, Supreme Court, Second Chamber, XXVI, December 2007, page 154, Thesis: 2a./J. 218/2007

La entrada The basic structure of IP litigation in Mexico (Second part) se publicó primero en Reyes Fenig.

A very common complaint from IP owners is the extremely long time it takes to obtain a final decision in an IP infringement action or a patent invalidation or trademark cancellation case.

The purpose of this post is explaining the structure of IP litigation in Mexico, and of the appeals system in this field of law; why appeals have been taking so long in being decided; why they may take longer; why the courts appear to be so unreasonably formalistic about the authority of the officials of the Mexican Patent and Trademark Office that decide cases; and what can we expect in the close future.

In Mexico, most IP litigation involves administrative instances, such as the Mexican Patent and Trademark Office.

It is possible to file criminal charges in connection to trademark forgery and illegal reproduction of works protected by copyright, and file actions for damages with a civil court, and the Mexican Patent and Trademark Office would have little involvement, if any, in these sorts of procedures.

However, administrative cases involving infringement and invalidation of IP rights largely outnumber the matters currently handled by the General Attorney’s Office and the criminal and civil courts, thus this post with make only reference to the administrative litigation.

Having said the above, the basic structure of an IP litigation process is the following:

A. The first instance is the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO).

The MPTO not only issues patents and registers trademarks; it also has authority to decide infringement actions involving patents, trademarks and some cases of copyright, and the invalidation or cancellation of patents and trademarks.

An infringement or cancellation or invalidation action involves a full administrative trial, with the filing of a complaint, and answer, filing and review of evidence, final arguments and a decision.

The MPTO typically takes from 10 to 18 months to decide a trademark cancellation/infringement action. A patent infringement/invalidation action may take from one to three years, sometimes more, if the substantive matter of the patents is complex, as in the case of biotechnology.

The MPTO may not award damages or attorneys’ fees. It may only impose a fine of the infringer; order the preliminary and/or definitive seizure of infringing product issue a preliminary/definitive order to stop the manufacture and/or commercialization of infringing goods; or remove a trademark from the registry or invalidate the patent.

B. Appeals against the MPTO

There are three possible ways to challenge a final decision from the MPTO, no matter if the decision is the result of litigation or of a purely administrative procedure (final rejection of a trademark or patent application).

B1. Administrative Review. It is possible to file a petition for administrative review with a higher-rank official of the MPTO itself.

The filing of the petition for Administrative Review is optional. The appellant may choose not to file it and appeal the decision with the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA) –see B2- or file an Amparo claim (constitutional appeal) with a Federal District Court –see B3-.

The higher rank officials of the MPTO tend to confirm the decisions, unless there was a clear procedural or formal error.

Filing a petition for Administrative Review using substantive arguments against the decision is usually a waste of time, or an effective way to delay a final decision, given that the MPTO may take one year or more to simply confirm the earlier decision.

The decision issued in connection Administrative Review may be subject of an appeal with the FCTAA (see B2) or an amparo claim (see B3).

From a technical perspective, the appeal with the FCTAA and the amparo claim are completely different procedures in nature and structure, but in order to keep it simple, I will make emphasis only in practical issues.

B2. Appeal with the FCTAA. The appeal with the FCTAA is the most usual way to challenge the decisions of the MPTO. The appellant has 45 business days to file the appeal with the FCTAA.

The FCTAA is divided in salas or chambers of three judges each, and a Highest Chamber of eleven judges.

The FCTAA started reviewing appeals concerning IP in mid 2000, as a consequence of an amendment to the Federal Law of Administrative Procedures (FLAP). Since January 2009, appeals concerning IP matters are decided by a specialized chamber.

The FCTAA takes between one and two years to decide an appeal. The FCTAA has authority to order the MPTO to cure some formal or procedural flaw and render a new decision, or to decide on the merits of the case instead of the MPTO.

The general rule is that the parties are allowed to file new evidence and arguments, not previously submitted with the MPTO. However, there is a recent non-binding decision from the Seventh Court of Appeals in Mexico City, that intends to limit the filing of new evidence and arguments to prove the use of a trademark in appeals associated to cancellation actions due lack of use*.

B3. Amparo claim. The amparo claim involves a constitutional review of a final authority’s decision by a federal district judge to verify if there was a breach of a garantía individual or constitutional basic right.

One basic constitutional right in Mexico is that all decisions should be issued in accordance to the law. If the decision breaches the law, then it may also be unconstitutional.

As a general rule, the consequences of the amparo are limited to the invalidation of the authority’s decision, if found against the constitution, and the issuance of a new decision, which under certain circumstances, may be subject of a new amparo claim or an appeal with the FCTAA.

The amparo was the usual way to challenge decisions from the MPTO, until mid 2000, when the amendment to the FLAP gave the FCTAA authority to review appeals against the decisions o the MPTO, among other government agencies.

Notwithstanding the above, the amparo claim is still available to challenge most decisions of the MPTO, although practitioners do not use it, given the shorter time they would have to prepare the appeal. Further, the district judges tend to invalidate decisions only to order the MPTO to cure a formal or procedural flaw and render a new decision, instead of deciding the merits of the case. Finally, and from my very personal perspective, the FCTAA’s decisions usually show more careful analysis of the parties’ arguments than the decisions from the district judges.

Unlike the appeal with the FCTAA, the general rule is that the parties are not allowed to file new evidence or arguments.

The appellant has 15 business days to file the amparo claim, and the judge may take from 6 to 12 months to issue a decision.

C. Final appeals

As explained above, the decision issued by a higher rank official of the MPTO in connection to a petition for administrative review (see B1) may be challenged with the FCTAA or a federal district judge.

The decisions issued by the FCTAA and the district judge may be subject of a final appeal with a tribunal colegiado de circuito or federal court of appeals, or with the Mexican Supreme Court in some extraordinary cases, such as the direct interpretation of the Federal Constitution or the constitutionality of a statute or statutory provision.

The final appeal may be decided by any of the seventeen courts of appeals specialized in administrative matters located in Mexico City. A federal court of appeals takes about six to ten months to decide a final appeal. The Supreme Court may take a little longer.

In the second part of this post, I will explain some of the reasons why the appeals take so long to be decided, and why they may take longer.

* Ninth Era, Weekly Judicial Journal of the Federation, Courts of Appeals, XXIX, April, 2009, page: 1925, Thesis: I.7o.A.617 A, Registry 167451

La entrada The basic structure of IP litigation in Mexico (First part) se publicó primero en Reyes Fenig.

The Mexican Supreme Court recently published three non-binding precedents* concerning the right of third parties to oppose a trademark application when said third parties think that the issuance of the trademark registration may somehow harm their acquired rights.

It is important to keep in mind that in Mexico, unlike other countries and regions, there is no opposition procedure (This changed; Mexico has oppositions now. Please read my update of May 1, 2016, Mexican Congress approves trademark opposition system). The Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) does not publish trademark applications (Update April 5, 2017. With the approval of the opposition proceeding in 2016, trademark applications are now published within a ten days term after the filing of the application). If the MPTO issues a trademark registration and a third party believes it harms its rights, it has the possibility of filing a trademark invalidation action with the MPTO to remove the trademark from the registry (Update Aprl 5, 2017. This has not changed and the right to file the invalidation action is not affected by the filing or lack of filign of the opposition).

Although trademark applications are not published (Update April 5, 2017. With the approval of the opposition proceeding in 2016, trademark applications are now published within a ten days term after the filing of the application), a trademark search in the database of the MPTO may reveal the existence of unpublished pending trademark applications. If a person thinks that the approval of a pending application may somehow negatively impact her/his interests, he/she may file a written “opposition” by filing a document stating the reasons why the application should be rejected (similar to an informative leter) (Update April 5, 2017. “Informal” oppositions are now supposed to be dismissed by the exmainers; the only oppositions that examiners may review are the ones filed within the one-month term provided for oppositions, counted from the day after the trademark application was published).

Given the lack of a statutory opposition procedure, it is up to the MPTO’s examiner to take the opponent’s objections in consideration. If the opponent’s arguments do not convince the examiner, and the MPTO issues the trademark registration, then the opposer may file the invalidation action.

There was the case of an “opponent” that successfully filed an appeal because the MPTO did not pay attention to his arguments against the approval of a pending trademark application**. Such case opened the possibility for the courts to provide the right (not stated in the statute) of opposing a trademark application and intervening in the application procedure as a party.

However, the precedents from the Mexican Supreme Court, even if they are not binding yet, have enough authority to virtually end the discussion about if a third party may have intervention as a party in the trademark application procedure with the MPTO. Among other issues, the Supreme Court decided that third parties are not entitled to oppose the issuance of a trademark application (they may still file briefs though), and that such lack of right to oppose trademark applications is not against due process, given that such “opponent” is entitled to file an invalidation action against the trademark registration when granted, if it harms an acquired right of the “opponent”.

From my point of view, the most interesting side of the precedents of the Supreme Court would be their possible impact in the current practice of the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA). The appeals against the rejections of trademark applications by the MPTO due the existence of earlier applied or registered trademark applications/registrations owned by third parties (among other causes) are filed with the FCTAA.

The appeal against the rejection of a trademark application would be decided in Mexico City. The FCTAA in Mexico City is divided in eleven “Metropolitan” Salas or Chambers, of three judges each, and there is also a Highest Panel of eleven judges (Update December 2010: On January 2009 all new IP cases and some older ones have been concentated in the new Chamber specialized in IP Law of the FCTAA).

The opinion of most of the Metropolitan Panels of the FCTAA -and of the Specialized Chamber in IP cases- is that the owners of the registered/applied trademarks that were cited as anticipations in the administrative application procedure with the MPTO, and that caused the rejection of the appellant’s trademark application, have legal standing to intervene as a third interested party in the appeal against the rejection of the trademark application. Such intervention allows the third interested party even to file the final appeal (amparo) against the FCTAA’s decision if unfavorable.

I have always been against the above-described FCTAA’s practice. Under the current statute, the owner of the trademark registrations/applications cited as anticipation was not, and did not have the right to be, a party of the application procedure that ended with the rejection of the trademark application. If the FCTAA decides to invalidate the MPTO’s rejection and orders it to issue the trademark registration, such decision would not limit any of the rights of the prior trademark holder. If such trademark holder thinks that the issuance of the trademark registration harms its trademark rights, it may file a cancellation action against the trademark registration on whatever available grounds.

Now, the rulings of the Supreme Court somehow support my opinion, by confirming that third parties have no right to oppose the pending trademark applications, because the eventual approval of the application would not invalidate or limit any of their existing rights. If the issuance of the trademark harms the rights of such third parties, there is a procedure available to defend them. Following these same ideas, it is not justifiable either that the FCTAA summons the owners of the trademarks cited as anticipation as third interested parties in the appeal against the rejection of a trademark application, because the eventual invalidation of the rejection would not limit or invalidate the earlier trademark rights of said third parties; if the issuance of a trademark registration as a consequence of the FCTAA’s decision harms a third party, there is an invalidation action procedure available to cancel the registration and defend the earlier trademark rights.

* Ninth Era; Second Chamber; Weekly Judicial Journal of the Federation; XXVII, February 2008; Page 730; Ninth Era; Second Chamber; Weekly Judicial Journal of the Federation; XXVII, February 2008; Page 731; Ninth Era; Second Chamber; Weekly Judicial Journal of the Federation; XXVII, February 2008; Page 732.

** Ninth Era, Federal Courts of Appeals; Weekly Judicial Journal of the Federation; XXV, January 2007; Page 2265.

La entrada Oppositions to trademark applications in Mexico se publicó primero en Reyes Fenig.