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.

I can remember the huge optimism around free market and trade liberalization when I was at Law School in the mid-nineties. The triumph of economic and political liberalism in most of the world seemed secured.

However, security concerns, inequality, distrust in the traditional political elites and fear of “others”, have caused some countries to take steps in unexpected directions. I do not see a revolutionary change, but we are seeing scenarios that were unthinkable five years ago.

One victim of the change og the tide has been NAFTA.

Readers should know that the implications of NAFTA in Mexico were huge, far beyond trade. For Mexicans, it was assuming a different role in the world. Needless to say, NAFTA deepened an already fundamental relation between Mexico and the US (the relation with Canada is important, but far from the relevance of the relation with the United States). As the well-known Mexican historian Lorenzo Mayer explains:

NAFTA was one of the most important symbolic moments in the Mexico-US relations since the formal alliance between the two countries in World War II. The agreement highlighted the failure of the development model known as Mexican economic nationalism, became a personal triumph for President Carlos Salinas and a collective triumph for the then ruling group in Mexico. After NAFTA, the state policies that were in place in Mexico, from the Mexican Revolution to the policy toward Central America in the eighties, were forgotten. Instead, Mexico adopted an administrative policy that may be called a new “special relationship” with the only Superpower of the end of the 20^th Century[1].

NAFTA had profound effects in the regulation of IP rights in Mexico. Large parts of the Mexican statutes regarding trademarks, patents, vegetal varieties and copyright were direct consequence of NAFTA. Now that that the survival of NAFTA is compromised, one may ask if the end of the trade agreement would impact the Mexican IP legislation.

Making predictions is a risky activity, but I think I can make a few reasonable guesses:

1. The United States, Canada and Mexico will continue being neighbors and trade will continue. In spite of the alleged efforts to diversify the destiny of exports, Mexico will continue highly dependent of trade with the United States and the relation will continue being highly asymmetric.
2. Economies in the three NAFTA nations will suffer; less in the United States and Canada than in Mexico, especially due decreased growth and investment rates in our country. Of course, there also will be winners.
3. Trade rules will change, but not too much. Mexico, the United States and Canada are still members of the World Trade Organization (WTO) and its rules would apply. The advantages of NAFTA would be gone, but Mexico is not going back to protectionism and import substitution industrialization policies.
4. It is unlikely that the end of NAFTA will cause a setback in the current protection of IP rights in Mexico. Even without NAFTA, our country would still be a party of many bilateral and multilateral agreements (notably, the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPS) that bind Mexico to keep the current legislation.
5. On the other hand, without NAFTA, Mexico will have little incentives to enhance the protection of IP rights, mainly in the field of technological innovation, where our northern neighbor enjoy a dominant position. I can think about a few examples of “not-happenings” if NAFTA ends: a) extending the term of patents due unjustified delay in examination or in issuance of marketing authorizations; b) providing a better regulation to the “non-reliance” aspect of efficacy and security data for new chemical entities to be used in pharmaceuticals and agrichemicals[2]; c) providing a minimum exclusivity term for sad data[3]; d) extending the patentability of certain developments that today are not even considered inventions, and; e) providing some sort of provisional protection procedures for inventions that are subject matter of published pending patent applications.

We do not know what the future of NAFTA will be; last October, some pessimistic estimates calculated that that the chances of survival of NAFTA were less than 50%[4]. If negotiations are not succesful and NAFTA ends, it would certainly not be the end of the world but, whatever the outcome may be, Mexicans should think again what kind of relation we want with our North American neighbors and the rest of the world.

[1] Josefina Zoraida Vázquez and Lorenzo Meyer, México frente a Estados Unidos. Un ensayo histórico, 1776-2000, 4^th ed., México, FCE, 2001, p. 239.  The English translation is mine.

[2] Data protection regarding safety and efficacy of new chemical entities for medicines and agrochemicals have tow aspects: non-disclosure and non-reliance. Only non-disclosure is properly covered by the statute and regulations, while non-reliance enjoys a weak protection, limited to pharmaceuticals, from an administrative internal guideline of the Mexican FDA. Such guideline may be easily suspended or terminated at any time.

[3] TRIPS does not provide a minimum term for data exclusivity. NAFTA states a minimum five years term, the same that the internal guideline of the Mexican FDA, although the guideline is applicable to pharmaceuticals only. The end of NAFTA will leave the term of data exclusivity in a weaker situation.

[4] “US demands raise fears that leaving NAFTA could hurt economy” at Chicago Tribune; electronic version at http://www.chicagotribune.com/business/sns-bc-us–nafta-in-danger-20171011-story.html. date of review: December 2, 2017.

La entrada What happens with IP in Mexico if NAFTA dies 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.

Since 1997, the Mexican statute makes a distinction between personal rights and economic rights. Personal rights include the right to decide if a work should be disclosed or not, the right to modify the work, the right to oppose the mutilation of the work, and the right to be acknowledged as author, among other rights. As a rule, personal rights have no monetary value and may not be assigned by contract.

Economic rights include the right to copy the work, distribute copies, communicate the work, authorize the public use of derivative works (such as translations and adaptations), among others, and may be assigned and licensed.

As a consequence of the 2003 amendment to the Federal Copyright Law, many lawyers and associations of authors claim that the economic rights on works of authors that died 50, 75 or 90 years ago are still in force, hence the holders of such economic rights are entitled to claim royalties for the use, public communication or reproduction of the works.

However, a thorough review of the different provisions and past legislations regarding copyright may lead to a different conclusion.

The Federal Copyright Law of 1947[1] provided that the term of copyright was the life of the author plus 20 years. A new copyright statute enacted in 1956 extended the life of copyright to the life of the author plus 25 years.

The Federal Copyright Law of 1956[2] expressly stated that the copyright term of works of authors that died before the enactment of the new law would be automatically extended to the term provided in the 1956 statute. In other words, the Federal Copyright Law of 1956 provided the retroactive application of the new extended term of copyright.

The 1956 law was amended in 1963; the 1963 amendments were so deep and extensive that it is usual to speak about the Federal Copyright Law of 1963[3], as if it were a new statute. The Federal Copyright Law of 1963 extended the term of copyright to the life of the author plus 30 years after his death. However, unlike the 1956 statute, the transitory articles of the 1963 law did not provide that the new term could be retroactively applied.

An amendment in 1982[4] to the Federal Copyright Law of 1963 stipulated a new extension for the term of the copyright: the life of the author plus 50 years. Again, the transitory articles of the amendment did not provide that the extended term would be retroactive.

Constitutional article 14 prohibits the retroactive enforcement of a law or regulation, only if it harms an acquired right. However, in my opinion, as a rule, in order to retroactively enforce a new law or amendment, it is necessary for the new or amendment law to expressly provide such retroactive effect[5]. The only exception would be new laws or provisions that stipulate criminal or administrative penalties, if the new stipulation or law states a benefit or less severe penalty; in this case the new stipulation or law would be enforced automatically, without explicitly stating the retroactive enforcement of the new law of provision[6].

Without a provision allowing the retroactive enforcement of the extended terms of copyright stipulated in the Federal Copyright Law of 1963 and its amendment of 1982, it is quite arguable to state that the original copyright term stipulated in the Copyright Law of 1956, was extended by the Federal Copyright Law of 1963 or its amendment of 1982. If the terms stated in the Law of 1963 and its amendment of 1982 cannot be enforced in connection with authors that died when the Law of 1956 was still in force, the copyright on the works of an author that passed away, i.e. on October 31, 1963, were extinguished by October 31, 1988, (25 years after the date of death).

In the same way, the term of copyright of authors that died when the Copyright Law of 1963 was in force, but before the amendment of 1982, did not get the benefit of the new extended term. The exclusivity rights on the works of an author deceased in 1966 would be extinguished by 1996.

The Federal Copyright Law currently in force was enacted on December 24, 1996[7], and became enforceable on March 24, 1997. As I stated at the beginning of this post, the 1997 Federal Copyright Law was the first statute to provide an explicit distinction between personal and economic rights in the field of copyright[8]. Originally, the Federal Copyright Law of 1996 stated a term of 75 years, counted from the date of death of the author, for economic rights. As in 1963 and 1982, the Federal Copyright Law of 1996 did not stipulate that the new extended term of the economic rights on a work could be retroactively enforced; the 2003 amendment to the Federal Copyright Law (enacted on July 23, 2003, and enforceable on July 24, 2003)[9] that extended the term of economic rights to a 100 years, counted from the death of the author, did not state retroactivity either.

Therefore, in opinion, the extended terms for economic rights provided in 1996 and 2003 may not be extended to works by authors that died before the new terms became enforceable.

About a year ago, AIPPI submitted Question 235 or Q235 about the term of copyright protection in Mexico. Unfortunately, the answer to the question from the Mexican chapter did not analyze the issues regarding the retroactive enforcement of the extended terms of copyright protection in Mexico.

In conclusion, there are four possible scenarios regarding the term of copyright economic rights in Mexico, depending on the statute or amended statute that was enforceable by the time the author of the work died:

A. In the case of the works of authors that died by or before January 11, 1982, the term of the copyright economic rights expired on January 11, 2012. These works are in public domain now.

B. In the case of the works authors that died between January 12, 1982 and March 23, 1997, the term of the copyright economic rights will expire 50 years after the date of death.

C. In the case of the works of authors that died between March 24, 1997 and July 23, 2003, the term of the copyright economic rights will expire 75 years after the date of death.

D. In the case of the works of authors that passed away on or after July 24, 2003, the economic rights will expire 100 years after the date of death.

For more information about copyright in Mexico, you may read Some basics about copyright law in Mexico.

———————–

[1] The Federal Copyright Law of 1947 (in Spanish) is available here.

[2] The Federal Copyright Law of 1956 (in Spanish) is available here.

[3] The Federal Copyright Law of 1963 (in Spanish) is available here.

[4] The 1982 amendment to the Federal Copyright Law of 1963 (in Spanish) is available here.

[5] There is an old non-binding precedent (in Spanish) from the Supreme Court that supports this opinion: “Retroactividad de la ley (Teoría de los derechos adquiridos) (Legislaciones del Distrito Federal y de Yucatán)”, Semanario Judicial de la Federación, Quinta Época, Tomo LXXVIII, p. 2435.

[6] There is a recent binding precedent (in Spanish) from the Supreme Court: “Principio de retroactividad de la norma posterior más favorable. Procede aplicarlo en beneficio del gobernado cuando la nueva disposición deja de considerar antijurídica la conducta sancionada con multa fiscal”, Semanario Judicial de la Federación y su Gaceta, Décima Época, Libro XIX, Tomo 2, abril de 2013, p. 1321.

[7] The original text of the Federal Copyright Law of 1996 (in Spanish) is available here.

[8] Before 1996, the distinction between economic and personal rights was known in Mexico, but limited to the jurisprudence and judicial decisions, as evidenced in this non-binding precedent (in Spanish) from 1987: “Derechos de autor. Distinción entre el derecho de divulgación y el patrimonial de explotación de la obra”, Semanario Judicial de la Federación, Séptima Época, Volumen 217-228, Sexta Parte, p. 214.

[9] The text of the 2003 amendment to the Federal Copyright Law of 1996 (in Spanish) is available here.

La entrada The different lenghts of Copyright in Mexico se publicó primero en Reyes Fenig.

Under some extraordinary circumstances, it is possible to file an appeal against a decision of the MPTO with a Federal District Judge, but this not the rule and the appeal I will refer to in this article is the appeal with the FCTAA.

One of the rules of the appeals with the FCTAA has been that the appellant and the appellee may file new arguments and evidence that were not previously filed with the MPTO; we call this rule litis abierta.

The filing of new arguments and/or evidence in the appeal has caused the FCTAA to revoke some decisions issued by the MPTO, fully legal and consistent to what the parties argued and proved. Nevertheless, not all courts of appeals agree on how the litis abierta rule should be applied. The Fourth Court of Appeals in Mexico City was against the filing of new evidence of use in appeals associated to cancellation actions against registered trademarks due non-use.

A new binding precedent from the Supreme Court (73/2013)[1], published in July 2013, has set some limits to the possibility of filing new evidence in appeals, although the language the court used in drafting this precedent is ambiguous. Although the precedent does not affect the right to file new arguments in the appeal with the FCTAA, the court stated that it would not be valid to declare the invalidation of a decision based on the analysis of evidence that the appellant did not file in the original procedure in spite of having the obligation and being capable to legally do so.

The precedent was issued to solve contradictory rulings between courts of appeals. Although origin of the contradictory decisions and the precedent itself were associated to tax cases, it construes a statutory provision that applies to all appeals filed with the FCTAA, thus it will impact IP cases.

In my opinion, the language the court uses in the precedent is a little ambiguous and it raises some questions. I am concerned about the obligation of filing evidence. Under Mexican law, filing evidence is a burden, but not an obligation. Actually, some lawyers believe that proving is a right. So what did the court mean about having the obligation of filing evidence?

I think that filing evidence becomes an obligation when the government agency, i.e. the MPTO, issues a specific order requesting one of the parties to exhibit certain document in the procedure. If the MPTO issue an order requesting a specific document, then there was an obligation to file it. If the party that received the order to file the document did not do it, according to this binding precedent, it can’t file it later as evidence in the appeal. Further, any document that was not subject matter of an order from the MPTO to be filed in the invalidation/cancellation/infringement proceeding, may be filed as new evidence in the appeal, because there was no obligation to file it in the previous procedure.

However, I think the courts of appeals will construe the precedent 73/2013 in a broader way. While continuing accepting the filing of new arguments, I think the courts of appeals will decide against the filing of all new evidence in the appeal. As an example, the Tenth Court of Appeals in Mexico City construed the precedent 73/2013 in such a broad way when deciding the final appeal (amparo directo) DA 552/2013.

The litis abierta rule applicable to appeals with the FCTAA will probably continue evolving, and I hope the courts of appeals and the Supreme Court itself will publish new precedents clarifying and narrowing the broad construction of this relatively new precedent.

La entrada The Mexican Supreme Court sets limits to the filing of new evidence in appeals. se publicó primero en Reyes Fenig.

ACTA is an international treaty. Morocco, Singapore, South Korea, Australia, Japan and the United States of America already signed it, although is not still in force as far as I know. In very general terms, the purpose of ACTA is attacking the illegal trade of pirated/counterfeited products, including their massive distribution online.

There has been a lot of controversy around ACTA, not only in Mexico but in many countries where the adoption has been proposed. A well-known case is the rejection of ACTA by the European Parliament after its approval by the European Commission.

It is not the purpose of this post starting a discussion about the possible benefits and risks of ACTA. However, there were two situations that strongly called my attention about the decision of the Mexican government about signing ACTA. First, I think it was odd that the Mexican President decided to sign ACTA (the President is the ultimate responsible of signing an international treaty) in spite of the explicit opposition of the Senate and the Federal Telecommunications Commission. Second, there are still a lot of informed people that believe that the Internet is “law-free” (or lawless?) environment beyond any State jurisdiction.

1. ACTA was signed in spite of the opposition of the Senate and a relevant Mexican government agency.

The Mexican Senate organized a Plural Study Committee (Grupo Plural de Trabajo) to analyze ACTA. In its conclusions, the Committee expressly requested the Executive Branch not to sign ACTA.

The position of the Senate is extremely important because ACTA needs the Senate’s ratification to be in force in Mexico. On the other hand starting September 1, 2012, a newly-elected Senate will start working. Perhaps the President (who will step down from office next November 30, 2012) thought that the newly-elected Senate will be more favorable to ACTA than the current senators.

The Federal Telecommunications Commission (COFETEL) is the government agency in charge of regulating telecommunications. COFETEL also expressed an adverse opinion to ACTA. COFETEL’S press release 65/2010 states that ACTA “could negatively impact the rate of penetration and general development of the national Internet industry”. The opinion of COFETEL was not binding.

During an interview with the Mexican journalist Carmen Aristegui, the Commissioner of the MPTO stated that the opinion of COFETEL was disregarded on formal grounds, basically because there was no evidence that all the commissioners approved the opinion against ACTA and COFETEL did not confirm its position after a request from the MPTO. Therefore, it is clear that the President (not actually the MPTO) decided to ignore the opinion of the federal regulatory agency in the field of telecommunications, in the in spite of the explicit purpose of ACTA of impacting the digital environment.

Now that the term of President Calderón is about to end, in less than two months the Mexican government took material steps to make Mexico part of two somehow controversial international agreements related with Intellectual Property (the Madrid Protocol and ACTA), although it is unclear when Mexico will effectively join both agreements. We do not know when the Mexican government will deposit the accession document to the Madrid Protocol (it may take months, even years) and ACTA needs the ratification of the Senate.

The approval of the Madrid Protocol and the accession to ACTA were unexpected.

Although the MPTO has been providing information about the Madrid Protocol for at least one year, by September 5, 2011 the Ministry of Foreign Affairs had no knowledge of Mexico approving the Madrid Protocol, but in April 2012 the Ministry of the Interior submitted the Madrid Protocol to the Senate for approval, which was swiftly granted.

On the other hand, after the negative opinions of the Mexican Senate and COFETEL, ACTA seem dead and still the federal government signed it without giving any prior notice.

Recently, the Minister of Economy stated that Mexico decided to join the Madrid Protocol because the United Stated conditioned supporting Mexico to join the Trans-Pacific Partnership (TPP) to the approval of the Madrid Protocol. I would not be surprised that signing ACTA was also a condition set for supporting the accession of Mexico to the TPP.

2. Internet as a “free environment”

In the interview with the Commissioner of the MPTO, the journalist Carmen Aristegui suggested that internet is a “free environment” that should allow the free and unrestricted distribution of ideas content.

The journalist’s position reflect the extended idea about the Internet as a law-lawless environment, as if it were another planet away from the reach of the State.

It is clear that there is a lot of freedom in the Internet, especially freedom to express ideas and opinions; this blog is an example. However, the freedom and rights of any person have limits, and usually the limits are set by the freedom and rights of others.

The above is extremely important in the case of distribution of contents through the Internet, therefore distribution or works. Freedom as a rule in the Internet is not a license to infringe other people’s rights. Freedom of speech should be encouraged, but the freedom to express my own ideas and works is very different from communicating and distributing the ideas and contents of other people when the owner of the rights on such ideas and contents does not agree with their distribution.

The distribution of contents and works in the Internet should be punished when such distribution is against the will of their authors or right-holders, even in the absence of monetary gain. Copying and distributing contents and works of others without authorization or against the explicit prohibition of the right-holders to do so without profit might not be a crime, but it is still against the law. Unfortunately, a lot of people do not understand this and prefer to support a misconception of freedom in the Internet.

Mexico must improve the protection of IP rights, there is no question about it. However, treaties and laws by themselves are not enough to change the reality. Existing laws and regulations in Mexico are fairly good (they could be better), but Mexico has to dramatically improve the enforcement, and in order to do so, courts and administrative authorities need better technical and material capabilities, and also the will. Getting the will to strongly and consistently enforce the existing laws against counterfeiting is difficult when the society continues considering most cases of piracy and product counterfeiting as lesser offenses, if offense at all. Incentives to purchase counterfeited goods are strong, and as long as there is demand for counterfeited products there will be offer, no matter treaties and laws. People need to be educated not only about the importance of protecting and observing IP rights but about the benefits that society and as whole and its members individually obtain from IP. Otherwise, I do not see how to win this fight.

La entrada Mexico signs ACTA 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.

The amendments corrected a few inconsistencies between the Rules and the Industrial Property Statute (the Statute), adjusted a few regulations to follow some repeated rulings of the Federal Court of Tax and Administrative Affairs and simplified the acknowledgement of priority claims in trademark matters.

CHANGES TO THE RULES OF WORD MARKS

I think that the most important amendment to the Rules refers to word marks.

In Mexico, only graphic symbols are acknowledged as trademarks, thus only graphics may be registered to obtain exclusivity rights on them. Depending on the claims stated in the application and the characteristics of the mark, there are four kinds of registered trademarks: nominativas or word-marks, innominadas or design-only marks, mixtas or word+design marks and tridimensionales or three-dimensional marks.

Word-marks consist of literal elements only, such as a word, a phrase or a combination of numbers and/or letters. One issue that neither the Statute nor the Rules clarified was if symbols, such as &, @ and +, and written signs that do not exist in Spanish, such as the ‘ (apostrophe), could be registered as part of a word-mark.

The amendment to the Rules of June 10 seeks to clarify, in a restrictive and confusing way, what can be included in a word mark.

The amended last paragraph of section 56 of the Rules, now states that “word marks and slogans may only include letters or words taken from the roman alphabet, western Arabic numbers and those written signs that would help the correct understanding of the mark”.

What surprised me more of the amendment, was the used of the expression “Roman alphabet”. In Mexico the official language is Spanish, and Spanish speakers use the Spanish -not the Roman- alphabet.

I believe that the new section 56 of the Rules now clearly exclude symbols such as &, #, @, mathematical symbols (+, /, >, <) and currency symbols ($, €), among others, from being included in trademark applications for word-marks.

Further, the amended section 56 of the Rules makes it very clear that word marks may not be expressed in characters taken from non-Latin alphabets, such as Greek, Hebrew, Chinese, Arabic, Cyrillic, etc.

The reform does not prohibit the registration of trademarks that include mathematical symbols or letters from non-Latin alphabets. However, such trademarks may not be registered as word marks, given that the Rules now implicitly consider such characters as a sort of drawing. Therefore, trademarks with non-Latin Characters or other symbols as the ones explained above have to be filed as design-only marks (innominadas) or word+design (mixtas) marks.

This is a quite relevant change. If a trademark is registered as a word-mark, the trademark owner may use it in any font, size and color, and such use would be regarded as use of the registered trademark for maintenance purposes. If a trademark is filed as word+design or design-only, the registrant must attach a print of the trademark to the application; if the registration is issued, the trademark owner must use the trademark as registered, so the use may be acknowledged as valid use of the registered trademark for maintenance purposes, including renewal.

I did not understand the distinction in the amended section 56 of the Rules about “written signs that would help the correct understanding of the mark”. What is the point of the distinction? If there are written signs that would help the correct understanding of the mark, then there could be written signs that would not help the correct understanding of the mark, or worst, that help the incorrect understanding of the mark?

My opinion is that there are no written signs included in the mark that help the correct understanding of the trademark. Written signs included in the mark are not intended to helping understanding the mark; they are part of the mark, thus all orthographic signs should be allowed to be included in word-marks. I am sure that among the written signs that will not have a problem to be part of word-marks are the punctuation marks, the exclamation (¡ !) and interrogation points (¿ ?), the diaeresis and the accent, although doubts and objections about the dash and the apostrophe are likely.

Other unclear, and somehow odd, issue involves trademarks that evolved from the Latin alphabet but do not actually belong to it, i.e. “Æ”, “Ç”, “Ø”, etc. Given that a word mark may only include characters from the Roman alphabet, the first reaction could be that a trademark that includes such letters may not be registered as a word-mark.

However, there are letters in Spanish that evolved from the Roman alphabet, but do not actually belong to it, such as “J”, “W” and most notably the “Ñ”. There is no question that the “Ñ” belongs to the Spanish alphabet, but undoubtedly is was not a part of the Roman alphabet; further, the classic Latin alphabet did not include the “J” and “W”.

Certainly, it would be ridiculous stating that, as a consequence of the amendment of section 56 of the Rules, words that include the “Ñ”, “W” or “J” may not be registered as word-marks any long. Then, the new section 56 of the Rules should be understood in the sense that all words including letters that evolved from the Latin alphabet should be allowed to be part of word-marks, naturally including the “Ñ”, “W” and “J”, but also “ß”, “Å”, “Ŝ”, “Ų” and all other letters that do not exist in Spanish but in other languages that that evolved from Roman characters too.

I am not sure if the Mexican Patent and Trademark Office will use a narrow concept of “Roman Alphabet” (excluding the registration as word-marks of trademarks that use the “Ñ”, “J” or “W”) or liberal (including each and all letters that developed from Roman, regardless if they belong to the Spanish alphabet or not), but it would not the first time that a rule or statutory provision is constructed in a way different of what the Government or the Congress meant. As example, there is the case of the extension of life of pipe-line patents (see The extension of Life of Patents in Mexico)and the inclusion of formulation patents in the linkage system situated in section 67 Bis of the Rules (see The Mexican Supreme Court expands the linkage system to prevent patent infringement). It would be odd and regretful, but I would not be surprised if in the future, Wikipedia becomes the authorized source to know what trademarks may be registered as word-marks in Mexico and which ones do not.

The Mexican government would have avoided problems if, instead of using the phrase “Roman alphabet”, they would have used the expression “Spanish alphabet”.

Another topic that makes me uneasy is the reason behind the restrictive amendment to section 56 of the Rules. Why the Executive Branch decided to restrict the possibility of obtaining word-mark registrations to those trademarks using Latin characters only? In a global economy, especially in such an open economy as the Mexican, it does not make much sense to close the possibilities of giving full protection to trademarks originated in other nations just because they are written different.

Further, why denying registration as word-mark of trademarks that use non-orthographic characters (the +, @ and &, for example)? I do not see a technical reason for narrowing the kind of characters that a word-mark may include, especially in the case of symbols that are widely used in Mexico.

I also think that the Administration lost a good opportunity to clarify if it is valid disclaiming words, phrases or letters from word-mark trademark applications. It also waste the opportunity of explaining whether the registration of a design-only or word+design trademark filed in black and white or grays gives the trademark owner the right to use the registered design in any color or color combination, in spite of having being registered in white and black or grays.

In general, I am in favor of any amendment to the Rules or the Statute that provides more certainty about the procedures and substantive rights, even if I do not like the amendment itself. Therefore, the upside of the amendment of section 56 of the Rules is that now it is clear that trademarks including or consisting of non-orthographic symbols and signs, and marks written in non-Latin characters cannot be registered as word-marks in Mexico. Now we have to clarify, and probably the courts will do it, how narrow or liberal is going to be the concept of “Roman Alphabet” that Mexican lawyers will have to use in trademark law to determine if a trademark may be registered as word-mark.

Finally, an issue that should concern Mexican practitioners is the potential conflict between the new Mexican Rules and the Paris Convention, in connection with priority-based trademark applications for word-marks that include letters or signs that may not be registered in Mexico, under the amended Rules, as word-marks.

La entrada Amendments to the Rules Governing Registration of Word-Marks in Mexico se publicó primero en Reyes Fenig.

In my opinion, the ad-hoc procedure is too burdensome for trademark owners, causing a very small number of applications for the ad-hoc acknowledgement of trademarks as well-known or famous in Mexico. I also stated that the limited benefits of the ad-hoc acknowledgement of a trademark as well-known and the high could also discourage applicants from applying for such acknowledgment.

Although I still maintain my opinions about the ad-hoc procedure, after I wrote the post, the Mexican Patent and Trademark Office have issued a small number of ad-hoc acknowledgments of well-known and famous trademarks.

The following trademarks have been acknowledged as famous in Mexico, through the ad-hoc procedure:

Trademark: “ANDREA”
Date of decision: November 4, 2008
Application serial No. 2197/2007
Owner: Fábricas de Calzado Andrea, S.A de C.V.
Status. Famous

Trademark: “CINEPOLIS”
Date of decision: November 20, 2008
Application serial No. 1256/2008
Owner: Cinemas de la República, S.A. de C.V.
Status: Famous

Trademark: “INTEL”
Date of decision: July 31, 2009
Application serial No. 1577/2008
Owner: Intel Corporation
Status: Famous

Trademark: “RED BULL”
Date of decision: February 19, 2010
Application serial No. 2284/2008
Owner: Red Bull GmbH
Status: Famous

Trademark: “MARINELA”
Date of decision: March 12, 2010
Application serial No. 103/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status. Famous

Trademark: “GANSITO”
Date of decision: March 12, 2010
Application serial No. 101/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Famous

Trademark: “BIMBO”
Date of decision: April 23, 2010
Application serial No. 100/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Famous

The following trademarks have been acknowledged as well-known in Mexico, through the ad-hoc procedure:

Trademark: “BARCEL”
Date of decision: March 22, 2010
Application serial No. 102/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Well-known

Trademark: “RICOLINO”
Date of decision: April 5, 2010
Application serial No. 104/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Well-known

Trademark: “PRITT”
Date of decision: June 30, 2010
Application serial No. 638/2009
Owner: Henkel AG & Co. KGAA
Status: Well-known

Of course, the above lists do not show all the trademarks that have been, or could be, regarded as well-known or famous in Mexico. It is limited to those registered trademarks that have been considered, as of August 5, 2010, as well-known or famous in Mexico through the ad-hoc procedure provided by section 98 bis-1 of the Mexican Industrial Property Law. Other trademarks have been acknowledged as well-known (and famous I assume, although I am not aware of such case) as a consequence of an invalidation or infringement actions, or just because the examiner believed they were famous or well-known when objecting or rejecting a trademark application form a third party, even if there was no previous procedure deciding that that mark was well-known or famous in Mexico.

Update March 2013: An updated list of trademarks acknowledged as well-known or famous, through the ad-hoc procedure, until January 2013 is available here.

La entrada Registered trademarks acknowledged as well-known or famous in Mexico through the ad-hoc procedure se publicó primero en Reyes Fenig.