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.

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

The amendment to the statute became effective on April 27, 2018.

In this second part, I will comment on the amendments affecting the protection of geographical indications.

Geographic indications 

The Mexican statute now provides a special protection of geographical indications through a registration issued by the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO). A geographical indication is the name of a geographical zone or a name that includes such geographical name or a reference to a geographical zone, that identifies a product as originated from such a zone when its quality, reputation or other characteristic is mainly caused because of its geographic origin.

Mexican law has provided protection for Appeals of Origin for many years. Geographical Indications and Appeals of Origin share some characteristics: they are both geographical names used to identify a product originated there. However, in the case of Appeals of Origin, all the characteristics of the goods that use them are consequence of their geographic origin. Geographical Indications are more flexible about the link to the geographical origin of the goods; if juts one of the characteristics of a product is essentially a consequence of the geographic origin, that is enough to justify the protection of the Geographic Indication.

I have to clarify that Mexico has adopted the use of Appeals of Origin in a very liberal way. For example, “Tequila”, perhaps Mexico’s best known appeal of origin; there are some facts that might call the reader’s attention: Tequila is the name of a town and a municipio or region in the western state of Jalisco known for the production of the blue agave spirit named “tequila”. Nevertheless, there is legitimate tequila produced outside the Tequila region, even outside the state of Jalisco. For example, there is tequila legally identified with the appeal of origin produced in the area of Pénjamo, state of Guanajuato. It is obvious that such a diversity of geographical locations seems inconsistent with an appeal of original, but that is the current state of things in the case of tequila.

Before the March, 2018, amendment to the statute, the protection of Geographical Indications was provided, not with a special registration, but through the legal stipulations against unfair competition. Now there is a special registration for Geographical Indications that would give exclusivity rights. Geographical indications existed before the amendment to the law, but nobody owned them; after registration, the owner will be the federal government.

There are two main reasons behind the creation of a registration for geographical registrations*: On one hand, give consumers certainty about the origin of the goods they purchase; on the other hand, the Geographical Indication may add value to goods from certain region, town or ethnic group, if any of its characteristics is directly related to the geographic origin.

Since registered geographical indications will be owned by the federal government, producers will have to apply for a license to use them through the MPTO.

As for foreign geographical indications and appeals of origin, the amendment created a special registration. The purpose of the registration is give owners of foreign geographical indications or appeals of origin certainty in Mexico by making the general public aware of the existence of the appeal of origin or geographical indication and entitling the entities that appear in the registration as owners of the geographical indication or appeal of origin to file actions against infringers.

This new registration system for appeals of origin and geographical indications add to the protection that Mexico had already the obligation to protect according to the Lisbon arrangement and the Agreement for Economic Cooperation between Mexico and the European Economic Community, regardless if such foreign appeal of origin or geographical indication is recorded in the new registration.

The statute has been amended to explicitly state as a cause of infringement using an appeal of origin or geographical indication, registered or unregistered, Mexican or foreign, without authorization.

Finally, on May 18, 2018, Mexico enacted the most relevant amendments to the trademark law in the last 30 years. A future post will comment on that.

* 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 2 of 2) se publicó primero en Reyes Fenig.

Virtually all final decisions that the Mexican Patent and Trademark Office (MPTO) and the Mexican Copyright Office (MCO) issue may be challenged with the FCAA. Technically speaking, the challenge with the FCAA is not an appeal, but a trial, where the MPTO or the MCO are the defendants; these procedures are often referred to as “nullity trials”. However, I think “appeal” is a good analogy, so that is how I am going to call the procedures to challenge the final decisions of the MCO and MPTO.

The main purpose of the amendments to the Statute was shortening the time that an appeal takes to be decided. The press release issued after the enactment of the amendment explicitly stated that the FCAA expected a drop of up to 50% in the timing of deciding an appeal.

Basically, the amendment cut the terms to file and oppose appeals, to file final arguments and to cure flaws in the brief, among others. For example, the term to file and oppose the appeal was 45 business days; now, it is 30 business days. We used to have 15 business days to file the final arguments; the amended term is only 5 days.

The amended Statute also seeks to force judges to issue decisions faster.

The amendments are not applicable to appeals filed before June 14, 2016.

Oddly enough, the Statute, as amended, has a handful of technical inconsistencies, evidencing that Congress was not careful enough when preparing the amendment. However, I think the inconsistencies will not be an actual source of concern.

Although the terms cuts seem a good measure to reduce the time an appeal takes to be decided, I wonder if that was all Congress could do to make the appeal proceedings with the FCAA faster.

Further, in an appeal against the rejection or abandonment of a patent, copyright or trademark application, cutting the term to file the appeal implies reducing the opportunity of the applicant to adequately prepare the defense of its rights against a possibly illegal, even abusive, decision. In a time when the defense of humans rights at Mexican courts has taken an unprecedented push, making it harder to applicants to challenge the decisions of the MPTO and the MCO does not seem to harmonize with the pro personae tendency.

La entrada Mexico expedites appeals 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.

Before the amendment, if an applicant wanted to claim priority, it had to state the application serial number of the claimed priority in the Mexican application and file a certified copy of the priority application with the Mexican Patent and Trademark Office (MPTO) within a three month term counted from the filing of the trademark application in Mexico in order to have the priority claim acknowledged.

Now, the applicant only has to state the priority application serial number in the Mexican application – and enter the government fee for the acknowledgement of a priority- to secure the priority right.

If the Mexican trademark application lists more products than the ones stated in the priority, the priority would be acknowledged only for the coincidental goods. If an applicant claims a non-existent priority and the MPTO issues a registration with such  a false claim, the trademark registration may be declared invalid.

The new simplified rule for priority trademark applications only benefits applications filed after June 11, 2011. This new rule should significantly reduce the cost of filing trademark applications with priority claim, given that the trademark agent will have one less deadline to worry about.

Regrettably, while the procedure for Mexican trademark applications is evolving to require fewer formalities, the patent application procedure has virtually remained the same since 1994.

For example, it is no longer necessary to file a power of attorney with the MPTO when filing a trademark application, but such formality has been maintained for patent applications. Now, the applicant does not have to file a certified copy of the priority application in the case of trademarks, but the formality persists for patents.

Further, the amended Rules expressly state that if the applicant files the priority document without translation, the applicant has a two months term to file the Spanish translations and the MPTO has not have to issue an office action requesting the translation; otherwise, the priority claim would not be acknowledged. However, the precedents from the Federal Court of Tax and Administrative Affairs state that it is illegal for the MPTO to refuse acknowledging a priority claim because the applicant did not file the Spanish translation of the document within the two months term, if the MPTO did not issue an office action requesting the translation ^1. .

The MPTO has not explained the reasons why the procedural rules and provisions regarding patents are not following the less formalistic trend of the trademark-related procedures. I do not see a technical reason, and I may only speculate that the people in charge of patents and the people in charge of trademarks believe that, rather than a Mexican Patent and Trademark Office, there is a Mexican Patent Office and a Mexican Trademark Office.

¹ Precedent “Patent. The Auhtority has the obligation to request the translation that was not filed with the patent application” – Page 463, Revista del Tribunal Federal de Justicia Fiscal y Administrativa or Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Volume 26, February 2010 (VI-TASR-EPI-222).

La entrada Mexico simplifies the acknowledgement of priority claims in trademark matters se publicó primero en Reyes Fenig.