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.

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.

The most important changes were the introduction of a special statutory protection for geographical indications and amendments to the provisions regarding industrial designs, including the term of protection.

The amendments to the Statute will become effective on April 27, 2018.

In this first part, I will comment on the amendments affecting the protection of industrial designs.

Industrial Designs

1. The term of protection of industrial designs was amended.

The old term was fifteen years counted from the filing date in Mexico. The new term will be five years from the filing date, renewable for five terms for a maximum term of twenty five years. The window to renew will start six months before the expiration date of the design registration, with a grace term of six months.

2. Design applications still pending on the date the amendments become effective will be examined according to the old provisions, unless the applicants file a written petition within a thirty business-day term, asking the Mexican Patent and Trademark Office (MPTO) to examine applications and grant issue registrations under the amended provisions. The deadline to ask the MPTO to examine applications under the new provisions will be June 11, 2018.

3. Existing design registrations will maintain their original fifteen years term, subject to the payment of the usual maintenance annuities, but they may be renewed for up to two five-year terms. The renewal application must be filed within six months before the date of expiration or within the following six-month grace term.

4. The amended statute intends to provide more accuracy to define novelty regarding industrial designs.

The Industrial Property Statute states that industrial designs may be registered if they are new and may be used in industry; that did not change. The statutory provision also states that a design is deemed to be new of they are of “independent creation and differ in a significant manner of known designs or combinations of characteristics of known designs”; that did not change either.

 The new thing is that, now, the amended statute explains that a design is of independent creation “if no other identical industrial design was publicly disclosed before the filing date of the application or the acknowledged priority”. Designs that only differ in “irrelevant” details will be considered identical. It will be up to the MPTO (and eventually the courts) to decide when a detail is irrelevant.

Further, the amended provisions stipulate that in order to decide whether a design actually differs in a significant manner from earlier disclosed designs, it will be necessary to consider the general impression that the design would cause on an expert on the subject matter and to the general impression caused by any other industrial design publicly disclosed before the filing date of the design application or the acknowledged priority, taking always in account the degree of freedom for the designer to create the industrial design.

The lawmakers that proposed the bill* explicitly explained that the purpose of the above amendment was to make novelty examination and prosecution of industrial design applications easier. However, I have doubts that they accomplished their aim. The demand of considering the impression that the design would cause on an expert, not just a person skilled in the art, seems out of proportion. Further, the amended statutory provision refers to an expert on the subject matter; what subject matter? I wonder if the examiners will need to have a PhD in Aesthetics to be deemed as an expert in the subject matter.

5. The Mexican statute allowed industrial designs to be registered in reference to a genericity of products. Now, the amended statute requires the applicant to identify the specific product on which the industrial design would be used.

6. The original bill proposed that industrial design registrations might also protect the design of handcrafts.

However the enacted amendments make no reference to handcrafts. It is not clear to me what happened at Congress and why the lawmakers decided to remove the explicit reference to handcrafts.

7. Before the changes in the Statute, design applications were not published; now they will be published as soon as the formal examination is completed.

8. Last but not least, one consequence of the amendments to the Industrial Property Statute is that official records of published patent, utility models and industrial design applications will become of public record just after the publication. Before the amendment, access to the official records of published patent, utility models and industrial design applications were very limited, even after the publication of the application. This change in the law is consistent with one of the main explicit purposes of the Industrial Property Statue, namely, encourage dissemination of information and technological knowledge. Further, allowing third parties to have full access to all the information stated in the patent/design/utility model application might give third parties a timely warning to avoid infringing the potential rights of the applicant.

* I thank my colleague Alejandro Luna Fandiño, Chair of the Legislation Committee of the Mexican Chapter of AIPPI, for kindly providing the project of the amendments to the Industrial Property Statute.

Diario oficial 13-mar-18 (diseños)

La entrada Mexico amends the Statute regarding industrial designs and geographical indications (Part 1 of 2) se publicó primero en Reyes Fenig.

On April 28, 2016, the Chamber of Representatives informed that it passed a bill that will amend the Mexican Industrial Property Law and insert an opposition system for trademark applications. The bill was approved by the Senate a few months ago, so all it takes is the publication by the President, which should happen soon. The amendment will be effective 90 calendar days after the publication in the Official Journal of the Federation.

(Update June 7, 2016: The amendments to the Industrial Property Law that introduced the opposition to trademark applications were published in the Official Journal of the Federation on June 1, 2016. The amendments and the opposition system will become effective on August 30, 2016)

The lack of an opposition system did not mean that trademark applications were not examined. The Mexican Patent and Trademark Office (MPTO) conducted the substantive examination ex-officio. If the examiner found obstacles, such as lack if distinctiveness, an identical or confusingly similar earlier registered or applied trademark covering the same or similar goods or services, or a well-known non-registered trademark, he issued an office action and allowed the applicant to answer and argue against the alleged lack of distinctiveness or similarities.

Further, if a third party believed that the approval of the trademark application could harm its rights, it could file an informal opposition. The informal opposition was a more or less short brief, calling the examiner’s attention to the existence of certain rights that could be harmed or infringed if the trademark application was approved. If the informal opposition was filed early in the examination proceeding, it had a good chance of being considered by the examiner and even cause the abandonment or final refusal of the opposed application.

The informal opposition was particularly effective to inform the examiner about the existence of a trademark application with a priority claim that predated the filing date of the examined application. It was not so effective when the ground of the opposition was earlier use in Mexico or abroad of an identical or confusingly similar trademark. If the MPTO approved an application for a trademark that was confusingly similar to another trademark used by a third party in Mexico or abroad to distinguish the same or similar goods or services, such third party could file an invalidation action, provided that it could prove that the use was earlier and continuous.

There has been an actual formal opposition (that has never been called like that) that takes place when a trademark application is subject of a final refusal because of the existence of an earlier registered or applied trademark in Mexico and the applicant files an appeal with the Federal Court of Tax and Administrative Affairs (FCTAA). In those cases, the court would serve a copy of the appeal to the owner of the anticipation, allowing it oppose the appeal by defending the legality of the final refusal, and even filing a final appeal (amparo) if the FCTAA’s decision were against the MPTO (see my earlier post Oppositions to trademark applications in Mexico).

Under the new opposition system, trademark applications will be published within ten business days after the filing date, regardless if formal requirements were meet. Third parties would have a one-month term to file an opposition.

The possible grounds for opposition will be broad, but limited to the substantive causes of non-registrability provided in sections 4 and 90 of the Mexican Industrial Property Law. For example, possible grounds of opposition would be descriptiveness of the trademark, illegal reproduction of the name or pseudonymous of an actual person, or the existence of an earlier identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services.

On the other hand, earlier and continuous use (in Mexico or abroad) of an identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services may not provide grounds for an opposition. Bad faith of the applicant because it was the licensee, representative, distributor or agent of a foreign trademark owner may not be a valid cause of opposition either. In these cases, the only available remedy has been and would be an invalidation action against the Mexican trademark registration.

There will be a government fee for opposing a trademark application. I do not know how much it will cost, but the reason behind the government fee is discouraging frivolous oppositions, thus I would expect it to be around US$150.00.

Oppositions would be published, and the applicant will have one month to answer the opposition and file arguments and evidence to support the application.

The Mexican opposition system intends to be simple and avoid becoming a burdensome time-consuming proceeding, as it happens in some South American countries. The opposition will be more a source of information for the examiner than a contentious proceeding (somehow similar to the ‘Letter of Protest’ in the United States) .

After the MPTO decides issuing the trademark registration or the final refusal of the application, the opposing party will receive a written communication informing about the success of the opposition or the approval of the trademark application. If the opposition were not successful, the opposing part may file an invalidation action.

Would the new opposition system significantly change the state of things in Mexico? I don’t think so.

In my opinion, the new opposition system provides rules and terms to an existing practice, without actually changing it. Trademark applications will continue being examined in the same way they used to. Further, the opposition and the result would not prejudice about third party’s rights or the intrinsic legality of the trademark registration, and the causes of invalidation will be available regardless if there was as opposition.

The lawmakers that supported the bill stated that the adoption of the Madrid Protocol encouraged the creation of the opposition system (I do not see the connection). According to the lawmakers, the opposition will help to reduce the number of invalidation actions, improve the quality of trademark examinations and provide right-holders –especially owners of earlier Mexican trademark registrations and applications- with a very cost-effective tool to protect their rights.

La entrada Mexican Congress approves trademark opposition system. se publicó primero en Reyes Fenig.

The Industrial Property Statute provides that trademark applications may include goods or services of one Class only, and that the goods and services described in the application should be specific. Mexico currently uses the 10th edition of the Nice Classification, and if there were doubts, the MPTO has broad authority to construe the Classification.

Today, examiners review and approve the goods or services listed in a trademark application simultaneously with the formal examination of the application, but always before the substantive examination. The substantive examination of a trademark application can’t start unless the examiner is satisfied with the description of goods or services, namely that the description is clear enough and that it does not list products or activities of more than one Class.

The purpose of the Guidelines is provide certainty to trademark applicant about how the description of goods and services is to be examined and construed. However, no matter what the intentions may be, changing the rules usually originates new questions and concerns.

This article will be focused on a very common practice in Mexico and other countries of copying the header of the International Classes as list of goods and services, and what will be the scope of coverage of trademark applications filed using those headers according to the Guidelines.

According to the Guidelines, the Class Headers now shall be construed in a restrictive way, and if the applicant uses them in the goods or services description, only the products and services expressly stated in the list shall be covered by the application.

The Mexican statute allowed full class coverage until the enactment of the 1991 Industrial Property Law. However, in spite that the new law did not allow claiming full-class coverage in trademark applications, as a matter of fact this kind of protection survived in practice by means of using the Headers of the International Classes.

The MPTO and many practitioners construed the Class Headers in a very extensive way. According to this construction, when the goods or services description reproduced the Header of the Class, the trademark application and resulting registration provided coverage for all the products and services included in the Class, including those goods and activities that were not implicitly described in the header through a genre.

An example would be the tacos. Tacos are classified in Class 30. The Class 30 header currently reads as follows: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

In my opinion, none of the goods and genres stated in the Class 30 Header include tacos. Nevertheless, an extensive construction of the Header lead the MPTO to consider that tacos were included the Class Header, so a trademark application or registration reproducing the Header of the Class 30 covered tacos. Today, with a restrictive construction according to the Guidelines, the MPTO will have to decide that a trademark application or registration with the Header of the Class 30 as list of goods does not comprise tacos in its coverage.

Therefore, this seems to be the actual death of the full-class coverage in Mexico.

One point of concern is, or should be, if the Guidelines will be applicable retroactively, not only to trademark applications filed before the Guidelines became enforceable, but to construe the coverage of trademark registrations issued before October 4, 2012.

Against the retroactive construction of the Classification as provided the Guidelines regarding trademarks and slogans registered before October 4, 2012, the Guidelines only make reference to trademark applications. The Guildelines explicitly state that their purpose is providing applicant with certainty about the examination of trademark applications, so it is clear that the MPTO’s intention to limit the Guidelines to trademark applications only.

In favor of the retroactive construction of the Classification as provided the Guidelines regarding trademarks and slogans registered before October 4, 2012, the Guidelines do not limit the list of products or services of trademark registrations and applications and do not generate new obligations for trademark owners. Actually, the bottom line question would be if the owner of a trademark registration has a right to a specific construction of the description of goods and services of a trademark application.

In the past, the Supreme Court ruled that the construction of laws and rules do not create new rules and law, thus using the Guidelines to construe the scope of protection provided in trademark applications and registrations filed or registered before October 4, 2012 would not be against the principle of no-retroactivity of the law (On the other hand, the new Amparo Law states that the precedents shall not be applicable in a retroactive way, thus it seems that there could be a right to a specific construction after all.).

Further, it would not be reasonable having two different simultaneous constructions of identical lists of goods or services that reproduce the same Class Header based on the date of registration.

The importance of the possible retroactivity of the Guidelines goes far beyond the academic interest. There are huge practical implications related to this issue: the use of registered trademarks and their consequences in connection to renewals and cancellation actions due lack of use of the registered trademark and invalidation of trademark registrations due false information about the date of first use of the trademark. We may also expect some impact regarding trademark infringement, anticipations and invalidation actions due earlier registration of an identical or similar trademark or because of earlier use.

La entrada What the New Guidelines to Construe the Classification of Goods and Services Mean for Trademark Owners and Applicants se publicó primero en Reyes Fenig.

a. The ad hoc procedure provided in section 98 Bis-1 of the Industrial Property Law, as amended in 2005. This procedure is available only for trademarks already registered in Mexico for the goods or services associated to the reputation of the mark.

b. Through an explicit acknowledgement of the Mexican Patent and Trademark Office (MPTO) when deciding the final rejection of a trademark application on the grounds that the applied trademark is identical or confusingly similar to well-known or famous trademark, in opinion of the examiner.

c. When the MPTO decides an infringement or invalidation action where the invalidation or infringement decision was a consequence that the plaintiff’s trademark registration was acknowledged as well-know or famous in Mexico.

In other earlier posts I explained some of the ups and downs of the current system to protect well-known and famous marks in Mexico, with a special focus on the ad hoc system provided in section 98 Bis 1 of the Industrial Property Law.

The following is a list updated to January 31, 2013 of the trademarks acknowledged as well-known and famous in Mexico through the ad hoc procedure stipulated in section 98 Bis 1 of the Industrial Property Law.

I MUST INSIST THAT THIS IS NOT A LIMITATIVE LIST. There are trademarks that have also been declared as well-known (and probably famous too) in Mexico that do not appear in the list because the acknowledgement was not the result of the ad hoc procedure, but of an invalidation or infringement action, so there was not special publication about this circumstance in the Official Gazette.

Any person interested in reviewing the decisions issued by the MPTO acknowledging a trademark by means of the ad hoc procedure and get detailed information may obtain them from the Official Gazette, Section of Protection of the Intellectual Property, downloadable from the SIGA database of the MPTO.

The first trademark acknowledged as well-known through the ad hoc procedure was “ANDREA”. That acknowledgement will expire on 2013. It will be interesting knowing if the owner of the trademark “ANDREA” will be interested in keeping the acknowledgment by filing a renew or “update”, in which the owner would have to demonstrate that the conditions that allowed the acknowledgement of the trademark as well-known continue.

FAMOUS TRADEMARKS (Ad hoc procedure until January 31, 2013)

Trademark: “CINEPOLIS”
Date of decision: November 20, 2009
Decision No.: 25663
Official Gazette issue: December 2009

Trademark: “RED BULL”
Date of decision: February 19, 2010
Decision No.: 3248
Official Gazette issue: April 2010

Trademark: “GANSITO”
Date of decision: March 12, 2010
Decision No.: 5224
Official Gazette issue: March, 2010

Trademark: “MARINELA”
Date of decision: March 12, 2010
Decision No.: 5223
Official Gazette issue: March, 2010

Trademark: “BIMBO”
Date of decision: April 23, 2010
Decision No.: 8830
Official Gazette issue: April, 2010

Trademark: “INTEL”
Date of decision: August 23, 2010
Decision No.: 19407
Official Gazette issue: August, 2010

Trademark: “HARMON HALL” & Design
Date of decision: September 3, 2010
Decision No.: 20422
Official Gazette issue: September, 2010

Trademark: “BMW” & Design
Date of decision: September 14, 2010
Decision No.: 21484
Official Gazette issue: September, 2010

Trademark: “JOSE CUERVO”
Date of decision: September 10, 2010
Decision No.: 21086
Official Gazette issue: September, 2010

Trademark: “MICROSOFT”
Date of decision: November 10, 2010
Decision No.: 26121
Official Gazette issue: November, 2010

Trademark: “FLEXI” & Design
Date of decision: December 7, 2010
Decision No.: 28262
Official Gazette issue: December, 2010

Trademark: “PEPSI”
Date of decision: March 29, 2011
Decision No.: 7154
Official Gazette issue: March, 2011

Trademark: “BARDAHL”
Date of decision: April 15, 2011
Decision No.: 9079
Official Gazette issue: April, 2011

Trademark: “PEMEX”
Date of decision: May 27, 2011
Decision No.: 12540
Official Gazette issue: May, 2011

Trademark: DRAWING (REDBULL bull drawing)
Date of decision: February 28, 2012
Decision No.: 5075
Official Gazette issue: February, 2012

Trademark: “TAKIS”
Date of decision: March 16, 2010
Decision No.: 7297
Official Gazette issue: March, 2012

Trademark: “YAHOO”
Date of decision: May 31, 2012
Decision No.: 14927
Official Gazette issue: May, 2012

Trademark: “COHIBA”
Date of decision: July 20, 2011
Decision No.: 20218
Official Gazette issue: July, 2012

Trademark: “TELEVISA”
Date of decision: August 31, 2012
Decision No.: 26648
Official Gazette issue: August, 2012

Trademark: “SOY TOTALMENTE”
Date of decision: September 28, 2012
Decision No.: 27900
Official Gazette issue: September, 2012

Trademark: “EL PALACIO DE HIERRO” & Design
Date of decision: September 28, 2012
Decision No.: 27901
Official Gazette issue: September, 2012

Trademark: “GANDHI”
Date of decision: October 31, 2012
Decision No.: 31277
Official Gazette issue: October, 2012

Trademark: DRAWING (BATMAN bat drawing)
Date of decision: November 30, 2012
Decision No.: 34417
Official Gazette issue: November, 2012

Trademark: “BATMAN”
Date of decision: November 30, 2012
Decision No.: 34418
Official Gazette issue: November, 2012

Trademark: “SUPERMAN” & Design
Date of decision: December 19, 2012
Decision No.: 37122
Official Gazette issue: December, 2012

Trademark “S” & Design (SUPERMAN S drawing)
Date of decision: 31 de January de 2013
Decision No.: 2665
Official Gazette issue: January 2013

WELL-KNOWN TRADEMARKS (Ad hoc procedure until January 31, 2013)

Trademark: “ANDREA”
Date of decision: November 4, 2008
Decision No.: 22721
Official Gazette issue: May, 2009

Trademark: “PRITT”
Date of decision: June 30, 2010
Decision No.: 14716
Official Gazette issue: June, 2010

Trademark: “BARCEL”
Date of decision: March 22, 2010
Decision No.: 5786
Official Gazette issue: March, 2010

Trademark: “RICOLINO”
Date of decision: April 5, 2010
Decision No.: 6972
Official Gazette issue: April, 2010

Trademark: “RESISTOL”
Date of decision: September 28, 2010
Decision No.: 22372
Official Gazette issue: September, 2010

Trademark: “LAS MOMIAS DE GUANAJUATO”
Date of decision: December, 2010
Decision No.: 28263
Official Gazette issue: December, 2010

Trademark: “HOTELES CITY EXPRESS”
Date of decision: December 21, 2010
Decision No.: 30046
Official Gazette issue: December, 2010

Trademark: “ADO”
Date of decision: May 31, 2011
Decision No.: 12869
Official Gazette issue: May, 2011/

Trademark: “ELEKTRA”
Date of decision: July 29, 2011
Decision No.: 18926
Official Gazette issue: July, 2011

Trademark: “SUPER PRECIO”
Date of decision: November 18, 2011
Decision No.: 29373
Official Gazette issue: November, 2011

Trademark: “PAYASO”
Date of decision: December 16, 2011
Decision No.: 33028
Official Gazette issue: December, 2011

Trademark: “CORONADO”
Date of decision: February 9, 2012
Decision No.: 3277
Official Gazette issue: February, 2012

Trademark: “MELATE”
Date of decision: October 31, 2012
Decision No.: 31280
Official Gazette issue: October, 2012

La entrada 2013 Update. Trademarks Acknowledged as Well-Known and Famous in Mexico se publicó primero en Reyes Fenig.

The Madrid Protocol should enter into force, with respect to Mexico, on February 19, 2013, although the text of the international treaty has not been officially published in our country.

Unfortunately, we still do not know if any changes will be made to the Mexican statutes and rules in order to adjust them to the Madrid Protocol. So far, Mexico does not have an opposition system and I have no information if there is the intention of creating one (See update of May 1, 2016 Mexican Congress approves trademark opposition system). The experience in Italy shows that an opposition system is not necessary for the actual operation of the Madrid Protocol. Nevertheless, most practitioners believe that it would be important –not essential- amending the law to create an opposition system.

The creation of an opposition system in Mexico would require the Congress to amend the Industrial Property Law. The Congress should be careful with the design of the opposition proceeding, so it does not become a mechanism that extends the application procedure forever.

I regret to say I am no optimistic about the quality of the possible amendments to the Mexican law associated to the Madrid Protocol. It is no secret that the accession of Mexico to the Madrid Protocol was because pressure of the United States (Mexico’s main commercial partner) and not because the needs of the Mexican businesses, as the Mexican Secretary of Economy himself accepted. Further, the short term in which the Madrid Protocol will become in force in Mexico makes me think that it is likely that the possible amendments will not receive enough care and attention in their planning and drafting. I sincerely hope to be wrong.

Another situation that we should not ignore is the cold reception of the Madrid Protocol among trademark practitioners. It would not be a surprise that the accession of Mexico to this international treaty will be challenged, and that the validity of international applications and registrations will be attacked in the courts with all sorts of arguments. (Update May 1, 2016. So far, I have not heard of such challenges).

An issue that, in my opinion, has not been studied in Mexico is the rank that should the given to the Regulations of the Madrid Protocol in relation with other domestic statues, rules and regulations. We have this same issue with the Regulations of the Patent Cooperation Treaty (PCT). If there is a contradiction between the Rules of the Madrid Protocol or the PCT and a federal statute, which one should prevail? What is the rank of the Regulations of international treaties in the Mexican legal system? A non-binding but widely accepted precedent from the Supreme Court states that international treaties are of higher rank than federal laws, but the Regulations of the Madrid Protocol and the PCT are –technically- not part of the international treaty or some other kind of international agreement acknowledged by our law; certainly they are not federal laws or Regulations issued by the President. I have thought that this problem could be solved by claiming that the domestic statutes and regulations are the general law, and that regulations of the international treaties are specific law, thus the regulations of the international treaties should prevail (Sorry, but I do not know the name of this canon in English or Latin). However, I am not fully comfortable with this solution because the lack of certainty about the rank of the regulations of the international treaties within the Mexican system (it would be either very high or the lowest).

We will probably have to wait for case law from the administrative and judicial courts, but this is such an interesting and potentially relevant problem that Mexican lawyers should start discussing it right now.

La entrada Mexico joins the Madrid Protocol se publicó primero en Reyes Fenig.

On April 3, 2012, the Secretaría de Gobernación or Ministry of the Interior submitted the text of the Madrid Protocol to the Mexican Senate for its review, discussion and approval. This legislature will have the last session in a few days, and the rumor is that the senators want to ratify this international treaty before the sessions period is over (Update May 14, 2012: On April 25, 2012, the Mexican Senate approved the accession of Mexico to Madrid Protocol).

Update July 18, 2012: In a private meeting with members of the Mexican Bar, the General Director of the Mexican Patent and Trademark Office clarified that although the Senate approved the accession of Mexico to the Madrid Protocol, the accession instrument has yet to be deposited with WIPO, and such deposit is not scheduled yet, so Mexico is not a party yet of the Madrid Protocol and we do not know when the treaty will enter into force with respect to Mexico.

Update December 23, 2012: On November 29, 2012 the Mexican government deposited the instrument of accesion at WIPO. Read Mexico joins the Madrid Protocol.

The position of the Mexican Chapter of the AIPPI, and of most of my colleagues, is of dismay. They have claimed for many years that Mexico should not join the Madrid Protocol because it does not benefit Mexican businesses and the treaty has serious technical deficiencies.

I do not know the Madrid Protocol well enough to discuss its technical deficiencies; what I know is that the people in Mexico that claimed that the Madrid Protocol is technical deficient did not produce a single paper demonstrating the alleged technical problems. Of course joining the Madrid Protocol will create problems in Mexico: we will have to adjust the Mexican legislation and procedures, create an opposition system and decide how the national trademark registrations will interact with the international registrations, but I do not see these issues as intrinsic deficiencies of the Madrid Protocol. If the Madrid Protocol was so technical deficient, we did a lousy job proving it.

Update July 18, 2012: In a private Seminar held in Mexico City on July 5, 2012, one of the highest rank officials of the Mexican Patent and Trademark Office stated that changes in the Mexican legislation and rules were not seen as essential before depositing the accession instrument with WIPO. Actually, it seems that the Mexican Patent and Trademark Office is not sure if there the law should be amended and how.

People, especially lawyers, do not like changes, and the Madrid Protocol will force us to change law and practices.

However, I do believe that Mexico should not access the Madrid Protocol because it does not seem in the best interest of Mexican businesses.

Although we live in a globalized world and Mexico is a very open economy, Mexican businesses “export” a relatively low number of trademarks. That can be explained because about 80% of our exports are bound to the United States. Therefore, if there is interest in protecting a trademark abroad, in most cases such interest is limited to the United States. On the other hand, Mexico’s policy does not actually intend to diversify the destiny if our exports. On the contrary, the idea is making Mexico more attractive for foreign investors as a way to gain access to the US market by developing local suppliers and taking advantage of the rules of origin provided in the North America Free Trade Agreement.

So, if the Madrid Protocol is not that good for Mexican companies, why would Mexico join? I think the actual reason why Mexico decided to take steps to access the Madrid Protocol is that the Mexican government is convinced that it will make our country more attractive to foreign investments. Although that may be true, I believe that stating that joining the Madrid Protocol will equally benefit Mexican and foreign businesses is very naive.

Update August 3, 2012: Periódico El Economista informed that the Mexican Minister of Economy revealed that the approval of the Madrid Protocol was because it was a condition set by the government of the United States to support the accesion of Mexico to the Trans-Pacific Partnership or TPP.

Update January 2015: Mexico started accepting international designations on February 2013. For a quick view of some practical problems of the Madrid System in Mexico, click here.

La entrada Mexico and the Madrid Protocol se publicó primero en Reyes Fenig.

On the other hand, it seems that there is the generalized idea among law-makers and government officials that amending the statutes to make the penalties therein stipulated more severe is an effective way to discourage illicit activities, thus somehow curing the lack of effective enforcement.

In this sense, on January 12, 2012 the Federal Journal of the Federation (official communication channel of the Federal Government) published several procedural and substantive amendments to the Industrial Property Law.

Some amendments, such as the ones aimed to ease the service of official communications and decisions issued by the Mexican Patent and Trademark Office (MPTO), only concern Mexican practitioners and I am not going to discuss them here.

Other more interesting amendment duplicates the fines associated to trademark, copyright and patent infringement in case of bad-faith infringers, and stipulates a presumption of bad-faith infringement.

If the trademark, copyright or patent owner marked the product with a warning about the existence of an exclusivity right (including but not limited to the © symbol with the date of first publication/disclosure of the work, name and address of the copyright holder; Patentado or equivalent; ®, M.R., Marca Registrada or equivalent) or published a warning about such an exclusivity right in a nationwide newspaper, then the infringer is presumed to be a bad-faith infringer and the amount of fine must be automatically doubled. It is my opinion that such a bad-faith presumption is a iuris et the iure presumption, that is, that the infringer may not file the evidence to prove on the contrary.

There is more information about the trademark and patent marking in our ealier post.

Although it is good to have more severe penalties for IP infringers, I believe that it would be better if the authorities work harder to effectively enforce the provisions we already have. For example, the MPTO may take almost one month to issue a preliminary measures order (similar to an injunction) in a patent or trademark infringement case, reflecting a lack of sense of urgency (to say the least) completely inconsistent with the purposes of the preliminary measures.

Rather than amending laws and regulations, we need a change of attitude about what it means to be the administrative authority in charge of enforcing IP rights.

La entrada An amendment in the Industrial Property Statute increases fines for bad-faith infringers in Mexico se publicó primero en Reyes Fenig.