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

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

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

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

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

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

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

Naturally, these measures have affected the industrial property system.

The Mexican Patent and Trademark Office

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

A.1. Trademark: “ANDREA”

Trademark registration number: 572,692

Date of acknowledgment: November 4, 2008.

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

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

Gazette: May 2009

Status: Live (Updated. Gazette February 2016)

A.2. Trademark: “PRITT”

Trademark registration number: 154,268

Date of acknowledgment: June 30, 2010

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

Owner: Henkel AG & Co. KGAA

Gazette: June 2010

Status: Live (Updated. Gazette August 2016)

A.3. Trademark: “BARCEL”

Trademark registration number: 164,548

Date of acknowledgment: March 22, 2010

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

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

Gazette: March 2010

Status: Expired

A.4. Trademark: “RICOLINO”

Trademark registration number: 255,612

Date of acknowledgment: April 5, 2010

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

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

Gazette: April 2010

Status: Expired

A.5. Trademark: “RESISTOL”

Trademark registration number: 41,955

Date of acknowledgment: September 28, 2010

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

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

Gazette: September 2010

Status: Live (Updated. Gazette July 2016)

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

Trademark registration number: 857,331

Date of acknowledgment: December. 7, 2010

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

Owner: Municipio de Guanajuato

Gazette: December 2010

Status: Expired

A.7. Trademark: “HOTELES CITY EXPRESS”

Trademark registration number: 780,478

Date of acknowledgment: December 21, 2010

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

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

Gazette: December 2010

Status: Live (Updated. Gazette February 2017)

A.8. Trademark: “ADO”

Trademark registration number: 843,017

Date of acknowledgment: May 31, 2011

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

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

Gazette: May 2011

Status: Expired

A.9. Trademark: “ELEKTRA”

Trademark registration number: 390,819

Date of acknowledgment: July 29, 2011

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

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

Gazette: July 2011

Status: Expired

A.10. Trademark: “SUPER PRECIO”

Trademark registration number: 650,945

Date of acknowledgment: November 18, 2011

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

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

Gazette: November 2011

Status: Expired

A.11. Trademark: “PAYASO”

Trademark registration number: 757,764

Date of acknowledgment: December 16, 2011

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

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

Gazette: December, 2011

Status: Live (Updated. Gazette September 2018)

A.12. Trademark: “CORONADO”

Trademark registration number: 887,611

Date of acknowledgment: February 9, 2012

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

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

Gazette: February 2012

Status: Live (Updated. Gazette July 2018)

A.13. Trademark: “MELATE”

Trademark registration number: 932,323

Date of acknowledgment: October 31, 2012

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

Owner: Pronósticos Para la Asistencia Pública

Gazette: October 2012

Status: Expired

A.14. Trademark: “ARENA MÉXICO”

Trademark registration number: 1,238,811

Date of acknowledgment: June 30, 2014

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

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

Gazette: June 2014

Status: Live a June de 2019

A.15. Trademark: “EKCO”

Trademark registration number: 51,806

Date of acknowledgment: July 29, 2014

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

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

Gazette: July 2014

Status: Live a July de 2019

A.16. Trademark: “VASCONIA”

Trademark registration number: 256,034

Date of acknowledgment: July 31, 2014

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

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

Gazette: July 2014

Status: Live a July de 2019

A.17. Trademark: “ENSUEÑO”

Trademark registration number: 891,080

Date of acknowledgment: November 24, 2014

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

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

Gazette: November 2014

Status: Live

A.18. Trademark: “DINA”

Trademark registration number: 380,305

Date of acknowledgment: December 19, 2014

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

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

Gazette: December 2014

Status: Live

A.19. Trademark: “S MART” (& Design)

Trademark registration number: 1,409,909

Date of acknowledgment: March 31, 2015

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

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

Gazette: March 2015

Status: Live

A.18. Trademark: “VERO”

Trademark registration number: 658,862

Date of acknowledgment: March 31, 2015

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

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

Gazette: March 2015

Status: Live

A.19. Trademark: “CAPRICE”

Trademark registration number: 354,077

Date of acknowledgment: April 30, 2015

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

Owner: CPIF Venture, Inc.

Gazette: April 2015

Status: Live

A.20. Trademark: “ELECTROLIT”

Trademark registration number: 461,398

Date of acknowledgment: May 27, 2015

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

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

Gazette: May 2015

Status: Live

A.21. Trademark: “TECATE TITANIUM”

Trademark registration number: 1,522,414

Date of acknowledgment: December 15, 2015

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

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

Gazette: December 2015

Status: Live

A.22. Trademark: “LEXUS”

Trademark registration number: 707,597

Date of acknowledgment: December 20, 2016

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

Owner: Toyota Jidosha Kabushiki Kaisha

Gazette: December 2016

Status: Live

A.23. Trademark: “MERCK”

Trademark registration number: 85,741

Date of acknowledgment: December 20, 2016

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

Owner: Merck KGAA

Gazette: December 2016

Status: Live

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

Trademark registration number: 982,278

Date of acknowledgment: January, 31 2017

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

Owner: Henkel AG & Co. KGAA

Gazette: January 2017

Status: Live

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

Trademark registration number: 706,852

Date of acknowledgment: July 31, 2017

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

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

Gazette: July 2017

Status: Live

A.26. Trademark: “NAVITEK”

Trademark registration number: 538,768

Date of acknowledgment: July 31, 2017

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

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

Gazette: July 2017

Status: Live

A.27 Trademark: “SENOSIAIN”

Trademark registration number: 62,173

Date of acknowledgment: November 30, 2017

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

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

Gazette: November 2017

Status: Live

A.28. Trademark: “TAJIN”

Trademark registration number: 320,328

Date of acknowledgment: May 31, 2018

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

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

Gazette: May 2018

Status: Live

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

Trademark registration number: 1,831,474

Date of acknowledgment: September 14, 2018

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

Owner: Annco, Inc.

Gazette: September 2018

Status: Live

A.30. Trademark: “KOTEX” (& Design)

Trademark registration number: 20,937

Date of acknowledgment: November 28, 2018

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

Owner: Kimberly-Clark Worldwide, Inc.

Gazette: November 2018

Status: Live

A.31. Trademark: “ANCE” (& Design)

Trademark registration number: 1,761,532

Date of acknowledgment: December 7, 2018

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

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

Gazette: December 2018

Status: Live

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

B 1. Trademark: “CINÉPOLIS”

Trademark registration number: 1,039,899

Date of acknowledgment: November 20, 2009

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

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

Gazette: December 2009

Status: Live (Updated. Gazette January 2015)

B.2. Trademark: “INTEL”

Trademark registration number: 277,115

Date of acknowledgment: August 23, 2010

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

Owner: Intel Corporation

Gazette: August 2010

Status: Live (Updated. Gazette May 2016)

B.3. Trademark: “RED BULL”

Trademark registration number: 848,424

Date of acknowledgment: February 19, 2010

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

Owner: Red Bull GmbH

Gazette: February 2010

Status: Live (Updated. Gazette September 2015)

B.4. Trademark: “MARINELA”

Trademark registration number: 261,258

Date of acknowledgment: March 12, 2010

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

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

Gazette: March 2010

Status: Live (Updated. Gazette October 2015)

B.5. Trademark: “GANSITO”

Trademark registration number: 95,836

Date of acknowledgment: March 12, 2010

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

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

Gazette: March 2010

Status: Live (Updated. Gazette September 2015)

B.6. Trademark: “BIMBO”

Trademark registration number: 697,020

Date of acknowledgment: April 23, 2010

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

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

Gazette: April 2010

Status: Live (Updated. Gazette February 2016)

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

Trademark registration number: 707,108

Date of acknowledgment: September 3, 2010

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

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

Gazette: September 2010

Status: Live (Updated. Gazette June 2016)

B.8. Trademark: “BMW” (& Design)

Trademark registration number: 416,369

Date of acknowledgment: September 14, 2010

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

Owner: Bayerische Motoren Werke Aktiengesellschaft

Status: Live (Updated. Gazette August 2016)

B.9. Trademark: “JOSE CUERVO”

Trademark registration number: 382,031

Date of acknowledgment: September 10, 2010

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

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

Gazette: September 2010

Status: Live (Updated. Gazette June 2016)

B.10. Trademark: “MICROSOFT”

Trademark registration number: 283,589

Date of acknowledgment: November 10, 2010

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

Owner: Microsoft Corporation

Gazette: November 2010

Status: Expired

B.11. Trademark: “FLEXI” (& Design)

Trademark registration number: 674,758

Date of acknowledgment: December 7, 2010

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

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

Gazette: December 2010

Status: Expired

B.12. Trademark: “PEPSI”

Trademark registration number: 346,468

Date of acknowledgment: March 29, 2011

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

Owner: Pepsico, Inc.

Gazette: March 2011

Status: Live (Updated. Gazette August 2017)

B.13. Trademark: “BARDAHL”

Trademark registration number: 865,925

Date of acknowledgment: April 15, 2011

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

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

Gazette: April 2011

Status: Live (Updated. Gazette March 2018)

B.14. Trademark: “PEMEX”

Trademark registration number: 522,165

Date of acknowledgment: May 27, 2011

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

Owner: Petróleos Mexicanos

Gazette: May 2011

Status: Live (Updated. Gazette March 2017)

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

Trademark registration number: 1,165,190

Date of acknowledgment: February 28, 2012

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

Owner: Red Bull GMBH

Gazette: February 2012

Status: Live (Updated Gazette October 2018)

B.16. Trademark: “TAKIS”

Trademark registration number: 547,799

Date of acknowledgment: March 16, 2012

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

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

Gazette: March 2012

Status: Expired

B.17. Trademark: “YAHOO”

Trademark registration number: 573,530

Date of acknowledgment: May 31, 2012

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

Owner: Oath Inc.

Gazette: May 2012

Status: Live (Updated. Gazette December 2018)

B.18. Trademark: “COHIBA”

Trademark registration number: 306,470

Date of acknowledgment: July 20, 2012

File number: M.F. 2249/2011

Owner: Corporation Habanos, S.A.

Gazette: July 2012

Status: Expired

B.19. Trademark: “TELEVISA”

Trademark registration number: 858,155

Date of acknowledgment: August 31, 2012

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

Owner: Mountrigi Management Group, LTD.

Gazette: August 2012

Status: Expired

B.20. Trademark: “SOY TOTALMENTE”

Trademark registration number: 645,851

Date of acknowledgment: September 28, 2012

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

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

Gazette: September 2012

Status: Live (Updated. Gazette November 2018)

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

Trademark registration number: 997,244

Date of acknowledgment: September 28,2012

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

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

Gazette: September 2012

Status: Live (Updated. Gazette November 2018)

B.22. Trademark: “GANDHI”

Trademark registration number: 559,538

Date of acknowledgment: October 31, 2012

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

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

Gazette: October 2012

Status: Live (Updated. Gazette November 2018)

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

Trademark registration number: 376,283

Date of acknowledgment: November 30, 2012

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

Owner: DC Comics

Gazette: November 2012

Status: Expired

B.24. Trademark: “BATMAN”

Trademark registration number: 371,343

Date of acknowledgment: November 30, 2012

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

Owner: DC Comics

Gazette: November 2012

Status: Expired

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

Trademark registration number: 366,500

Date of acknowledgment: December 19, 2012

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

Owner: DC Comics

Gazette: April 2015

Status: Expired

B.26. Trademark: “S” (& Design)

Trademark registration number: 580,446

Date of acknowledgment: January 31, 2013

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

Owner: DC Comics

Gazette: January 2013

Status: Expired

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

Trademark registration number: 1,338,179

Date of acknowledgment: July 31, 2013

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

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

Gazette: July 2013

Status: Live (Updated. Gazette November 2018)

B.28. Trademark: “TIA ROSA”

Trademark registration number: 168,816

Date of acknowledgment: September 5, 2013

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

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

Gazette: September 2013

Status: Expired

29. 29. Trademark: “BUBULUBU”

Trademark registration number: 281,881

Date of acknowledgment: October 31, 2013

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

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

Gazette: October 2013

Status: Expired

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

Trademark registration number: 969,409

Date of acknowledgment: December 19, 2013

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

Owner: Roberto Gómez Fernández

Gazette December 2013

Status: Expired

B.31. Trademark: “CKLASS” (& Design)”

Trademark registration number: 880,569

Date of acknowledgment: January 29, 2014

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

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

Gazette: January 2104

Status: Live a January de 2019

B.32. Trademark: “PINOL”

Trademark registration number: 472,540

Date of acknowledgment: March 31, 2014

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

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

Gazette: March 2014

Status: Live a March de 2019

B.33 Trademark: “LA COSTEÑA”

Trademark registration number: 375,684

Date of acknowledgment: April 15,2014

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

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

Gazette: April 2014

Status: Live a April de 2019

B.34. Trademark: “HELVEX”

Trademark registration number: 957,168

Date of acknowledgment: August 20, 2014

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

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

Gazette: August 2014

Status: Live a August de 2019

B.35. Trademark: “CLORALEX”

Trademark registration number: 367,713

Date of acknowledgment: September 15, 2014

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

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

Gazette: September 2014

Status: Live

B.36. Trademark: “IPHONE”

Trademark registration number: 1,039,157

Date of acknowledgment: September 30, 2014

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

Owner: Apple Inc.

Gazette: September 2014

Status: Live

B.37. Trademark: “ILUSIÓN”

Trademark registration number: 1,474,836

Date of acknowledgment: October 10, 2014

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

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

Gazette: October 2014

Status: Live

B.38. Trademark: “HERDEZ”

Trademark registration number: 61,432

Date of acknowledgment: October 22, 2014

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

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

Gazette: October 2014

Status: Live

B.39. Trademark: “TORTILLINAS”

Trademark registration number: 409,826

Date of acknowledgment: December 15, 2014

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

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

Gazette: December 2014

Status: Live

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

Trademark registration number: 1,172,732

Date of acknowledgment: December 19, 2014

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

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

Gazette: December 2014

Status: Live

B.41. Trademark: “OMNILIFE”

Trademark registration number: 556,402

Date of acknowledgment: February 27, 2015

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

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

Gazette: February 2015

Status: Live

B.42. Trademark: “SICO”

Trademark registration number: 391,088

Date of acknowledgment: April 29,2015

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

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

Gazette: June 2015

Status: Live

B.43. Trademark: “LEGO” (& Design)

Trademark registration number: 443,052

Date of acknowledgment: June 30, 2015

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

Owner: Lego Juris A/S

Gazette: September 2015

Status: Live

B.43. Trademark: “BUFALO” (& Design)

Trademark registration number: 663,658

Date of acknowledgment: September 30, 2015

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

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

Gazette: September 2015

Status: Live

B.44. Trademark: “FIRESTONE”

Trademark registration number: 14,524

Date of acknowledgment: October 22, 2015

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

Owner: Bridgestone Licensing Services, Inc.

Gazette: October 2015

Status: Live

B.45. Trademark: “BRIDGESTONE”

Trademark registration number: 1,440,418

Date of acknowledgment: October 22, 2015

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

Owner: Bidgestone Corporation

Gazette: October 2015

Status: Live

B.46. Trademark: “EL CHAPULIN COLORADO”

Trademark registration number: 555,383

Date of acknowledgment: November 30, 2015

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

Owner: Roberto Gómez Fernández

Gazette: November 2015

Status: Live

B.47. Trademark: “LG” (& Design)

Trademark registration number: 509,298

Date of acknowledgment: November 30, 2015

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

Owner: LG Corp.

Gazette: November 2015

Status: Live

B.48. Trademark: “TECATE”

Trademark registration number: 134,004

Date of acknowledgment: December 15, 2015

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

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

Gazette: December 2015

Status: Live

B.49. Trademark: “HARPIC”

Trademark registration number: 236,065

Date of acknowledgment: February 19,2016

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

Owner: Reckitt & Colman (Overseas) Limited

Gazette: February 2016

Status: Live

B.50. Trademark: “DOÑA MARIA”

Trademark registration number: 186,178

Date of acknowledgment: March 31, 2016

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

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

Gazette: March 2016

Status: Live

B.51. Trademark: “BARCEL”

Trademark registration number: 164,548

Date of acknowledgment: April 29, 2016

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

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

Gazette: April 2016

Status: Live

B.52. Trademark: “SIETE MACHOS”

Trademark registration number: 30,648

Date of acknowledgment: May 30, 2016

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

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

Gazette: May 2016

Status: Live

B.53 Trademark: “RICOLINO”

Trademark registration number: 255,612

Date of acknowledgment: June 28, 2016

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

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

Gazette: June 2016

Status: Live

B.54. Trademark: “DEL FUERTE”

Trademark registration number: 216,397

Date of acknowledgment: June 29, 2016

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

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

Gazette: June 2016

Status: Live

B.55. Trademark: “BENOTTO”

Trademark registration number: 138,139

Date of acknowledgment: August 30, 2016

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

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

Gazette: August 2016

Status: Live

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

Trademark registration number: 550,086

Date of acknowledgment: September 13, 2016

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

Owner: Instituto Mexicano del Seguro Social

Gazette: September 2016

Status: Live

B.57. Trademark: “GAMESA”

Trademark registration number: 347,617

Date of acknowledgment: October 31,2016

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

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

Gazette: October 2016

Status: Live

B.58. Trademark: “EMPERADOR”

Trademark registration number: 448,088

Date of acknowledgment: October 31, 2016

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

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

Gazette: October 2016

Status: Live

B.59. Trademark: “SABRITAS”

Trademark registration number: 98,999

Date of acknowledgment: November 30,2016

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

Owner: Pepsico, Inc.

Gazette: November 2016

Status: Live

B.60. Trademark: “ACTIVIA”

Trademark registration number: 658,926

Date of acknowledgment: November 30, 2016

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

Owner: Companie Gervais Danone

Gazette: November 2016

Status: Live

B.61. Trademark: “BEST DAY”

Trademark registration number: 1,115,026

Date of acknowledgment: January 31, 2017

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

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

Gazette: January 2017

Status: Live

B.62. Trademark: “SALADITAS”

Trademark registration number: 551,018

Date of acknowledgment: March 31, 2017

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

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

Gazette: March 2017

Status: Live

B.63 Trademark: “VERDE VALLE”

Trademark registration number: 251,457

Date of acknowledgment: March 31, 2017

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

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

Gazette: March 2017

Status: Live

B.64. Trademark: “EXA”

Trademark registration number: 630,027

Date of acknowledgment: March 31, 2017

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

Owner: Stereorey México, S.A.

Gazette: March 2017

Status: Live

B.65. Trademark: “VINCI”

Trademark registration number: 890,229

Date of acknowledgment: March 31, 2017

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

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

Gazette: March 2017

Status: Live

B.66. Trademark: “SCHICK”

Trademark registration number: 287,891

Date of acknowledgment: March 31, 2017

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

Owner: Edgewell Personal Care Brands, LLC

Gazette: March 2017

Status: Live

B.67. Trademark: “OXXO” (& Design)

Trademark registration number: 453,234

Date of acknowledgment: April 18,2017

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

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

Gazette: April 2017

Status: Live

B.68. Trademark: “SI VALE”

Trademark registration number: 593,922

Date of acknowledgment: April 28, 2017

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

Owner: Si Vale México, S.A. de C.V.

Gazette: April 2017

Status: Live

B.69. Trademark: “NISSAN”

Trademark registration number: 96,287

Date of acknowledgment: July 28, 2017

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

Owner: Nissan Jidosha Kabushiki Kaisha

Gazette: July 2017

Status: Live

B.70. Trademark: “FLEXI”

Trademark registration number: 868,350

Date of acknowledgment: July 31,2017

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

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

Gazette: July 2017

Status: Live

B.71. Trademark: “BARCELÓ”

Trademark registration number: 918,959

Date of acknowledgment: July 31, 2017

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

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

Gazette: July 2017

Status: Live

B.72. Trademark: “ANDREA” (& Design)

Trademark registration number: 739,383

Date of acknowledgment: July 31, 2017

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

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

Gazette: July 2017

Status: Live

B.73. Trademark: “CORONA”

Trademark registration number: 841,746

Date of acknowledgment: August 31, 2017

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

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

Gazette: August 2017

Status: Live

B.74. Trademark: “PUEBLOS MÁGICOS”

Trademark registration number: 740,363

Date of acknowledgment: September 18, 2017

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

Owner: Secretaría de Turismo

Gazette: September 2017

Status: Live

B.75. Trademark: “VOGUE”

Trademark registration number: 740,363

Date of acknowledgment: September 29, 2017

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

Owner: Advance Magazine Publishers, Inc.

Gazette: September 2017

Status: Live

B.76. Trademark: “NIKE”

Trademark registration number:  252,062

Date of acknowledgment: February 28, 2018

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

Owner: Nike Innovate C.V.

Gazette: February 2018

Status: Live

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

Trademark registration number: 797,100

Date of acknowledgment: February 28, 2018

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

Owner: Nike Innovate C.V.

Gazette: February 2018

Status: Live

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

Trademark registration number: 1,634,161

Date of acknowledgment: March 20, 2018

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

Owner: Municipio de Guanajuato

Gazette: March 2018

Status: Live

B.79. Trademark: “SUAVITEL”

Trademark registration number: 415,924

Date of acknowledgment: April 27, 2018

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

Owner: CPIF Venture, Inc.

Gazette: April 2018

Status: Live

B.80. Trademark: “COFLEX”

Trademark registration number: 836,301

Date of acknowledgment: April 30, 2018

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

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

Gazette: April 2018

Status: Live

B.81. Trademark: “MERCK”

Trademark registration number: 85,741

Date of acknowledgment: April 30, 2018

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

Owner: Merck KGAA

Gazette: April 2018

Status: Live

B.81. Trademark: “KIDZANIA”

Trademark registration number: 810,047

Date of acknowledgment: April 30, 2018

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

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

Gazette: April 2018

Status: Live

B.82. Trademark: “THE HOME DEPOT”

Trademark registration number: 382,465

Date of acknowledgment: May 29, 2018

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

Owner: Home Depot International, Inc.

Gazette: May 2018

Status: Live

B.83. Trademark: “BONAFONT”

Trademark registration number: 420,754

Date of acknowledgment: May 31, 2018

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

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

Gazette: May 2018

Status: Live

B.84. Trademark: “BODEGA AURRERA”

Trademark registration number: 1,174,787

Date of acknowledgment: May 31, 2018

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

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

Gazette: May 2018

Status: Live

B.85. Trademark: “AXA”

Trademark registration number: 1,740,983

Date of acknowledgment: June 28, 2018

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

Owner: Axa

Gazette: June 2018

Status: Live

B.86. Trademark: “NUTRISA”

Trademark registration number: 817,447

Date of acknowledgment: June 29, 2018

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

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

Gazette: June 2018

Status: Live

B.87. Trademark: “LALA” (& Design)

Trademark registration number: 1,522,214

Date of acknowledgment: July 23, 2018

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

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

Gazette: July 2018

Status: Live

B.88. Trademark: “ZARA”

Trademark registration number: 400,136

Date of acknowledgment: September 27, 2018

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

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

Gazette: September 2018

Status: Live

B.89. Trademark: “CAGUAMA”

Trademark registration number: 570,851

Date of acknowledgment: October 29, 2018

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

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

Gazette: October 2018

Status: Live

B.90. Trademark: “SONORA GRILL”

Trademark registration number: 1,933,263

Date of acknowledgment: October 30, 2018

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

Owner: Ricardo Añorve Martinez

Gazette: October 2018

Status: Live

B.91. Trademark: “AMERICAN EXPRESS”

Trademark registration number: 199,952

Date of acknowledgment: October 31, 2018

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

Owner: American Express Marketing & Development Corp.

Gazette: October 2018

Status: Live

B.92. Trademark: “ANDATTI”

Trademark registration number: 1,917,496

Date of acknowledgment: November 29, 2018

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

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

Gazette: November 2018

Status: Live

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

Trademark registration number: 942,216

Date of acknowledgment: November 29, 2018

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

Owner: Monster Energy Company

Gazette: November 2018

Status: Live

B.94. Trademark: “MONSTER”

Trademark registration number: 766,635

Date of acknowledgment: November 29, 2018

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

Owner: Monster Energy Company

Gazette: November 2018

Status: Live

B.95. Trademark: “PHOTOSHOP”

Trademark registration number: 670,716

Date of acknowledgment: November 30, 2018

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

Owner: Adobe System Incorporated

Gazette: November 2018

Status: Live

B.96. Trademark: “MASSIMO DUTTI”

Trademark registration number: 627,417

Date of acknowledgment: December 17, 2018

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

Owner: Grupo Massimo Dutti, S.A.

Gazette: August 2009

Status: Live

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

Trademark registration number: 711,239

Date of acknowledgment: December 19, 2018

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

Owner: Escuela Libre de Derecho

Gazette: November 2011

Status: Live

B.98. Trademark: “PARAMETRÍA DE FRANCISCO ABUNDIS

Trademark registration number: 1,858,409

Date of acknowledgment: December 19, 2018

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

Owner: Parametría S.A de C.V.

Gazette: December 2018

Status: Live

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

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

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

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

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

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

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

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

1) Declaration of use after three years of registration.

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

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

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

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

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

2) Declaration of use when renewing.

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

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

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

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

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

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

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

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

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

Industrial Designs

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Diario oficial 13-mar-18 (diseños)

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

Sportflix claimed to be a Mexican Internet platform that, by means of a subscription, offers streaming services of sport events broadcasted by companies such as ESPN, Foxsports, Televisa and TV Azteca, among others. Actually, Mexican press often identified Sportflix as the “Netflix of sports”[3]. When questioned about licenses and authorizations to stream other’s transmissions, the alleged VicePresident of Sportflix said that their activities would not harm the exclusivity rights of the broadcasters because Sportflix is a streaming service, not a TV broadcaster[4].

Sportflix.net was scheduled to start streaming on August 30, 2017, but no content seems available yet. The site states that it still welcomes subscribers.

The WHOIS information available on September 28, 2017, states that sportflix.net belongs to someone identified as “Ninja Mortal” (I guess translation is not necessary) addresses at Patzcuaro, state of Guerrero, Mexico[5] (Patzcuaro is actually at the state of Michoacán, not Guerrero). SPORTFLIX is a registered Trademark in Mexico for services in International Classes 38 and 41, with registration numbers 1,758,031, 1758,032, 1,758,033 y 1,745,868 (issued in 2016) in the name of Matías Jacobo Said.

The press release of the MPTO states that there are, at least, two infringement actions: one related to trademark infringement and probably unfair competition; and the other associated to copyright infringement (the MPTO has jurisdiction on copyright infringement cases when related with trade). The MPTO did not explain exactly what causes of infringement were involved in the infringement actions against the streaming platform. The MPTO also enforced preliminary measures on the person/entity in charge of sportflix.net.

Although the MPTO did not identified the copyrights that sportflix.net was allegedly infringing, it stated that the infringement actions involved the defense of Mexican trademark registrations numbers 689,527 TELEVISA & Design, 1,637,894 TELEVISA & Design (both owned by Mountrigi Management Group Ltd.), 568,659 TV AZTECA & Design (in the name of TV Azteca, S.A. de C.V.), 606,147 FOX SPORTS & Design, 606,148 FOX SPORTS & Design (both owned by Twentieth Century Fox Film Corporation), 532,938 ESPN (in the name of ESPN Inc.), 802,767 TNT & Design (owned by Turner Network Television, Inc.) and 413,704 UNIVISION & Design (in the name of Univision Communications Inc.).

I am sure the sportflix.net case is full of interesting substantive issues and questions. However, right now, I am interested in only one aspect of the case: the MPTO filed the infringement action ex officio. When the MPTO starts an infringement action ex officio, one official of the MPTO prepares and files the action as plaintiff, while other official of the MPTO (not necessarily of higher rank) manages the procedure and renders a decision. Of course, there is no way to avoid a bias when the case, filed by one official of the MPTO, is to be solved by the guy sitting just two desks away.

There is no question that the MPTO has authority to file infringement actions ex officio and decide them. Sections 79, 155 and 188 of the Industrial Property Law authorize the MPTO to prepare, file and decide infringement, invalidation and cancellation actions. Actually, section 188 of the Industrial Property Law was amended on June, 2010, to encourage the MPTO to filed and decide infringement cases ex officio.

The fact that the MPTO may be more proactive in filing ex officio actions is positive in general. However I think the MPTO has to be careful about the justification to file an action ex officio.

All actions taken by the MPTO, especially if they involve starting ex officio a procedure against an individual or entity, must have as ultimate motivation the defense of public order or common good.

Preparing and starting ex officio an infringement action demands the use of the MPTO’s human and material resources and spending taxpayers’ money that will not be used in other tasks. Therefore, I believe the infringement procedure has to be aimed to cause a direct, clear, identifiable and specific benefit for the community in order to justify filing it ex officio. Infringement of the law and defense of legitimate private trademark rights is just not enough. Further, in the case of sportflix.net, the MPTO enforced preliminary measures, thus the MPTO is liable for the damages an losses that the preliminary measure may cause on the defendant, in the unlikely case that the MPTO decides there was no infringement. If the MPTO has to pay an indemnification, it will be with taxpayer’s money.

Again, it is good that the MPTO shows more willingness to start infringement actions ex officio. Neverthless, I am sure that Mountrigi Management Group Ltd. (owner of the Televisa trademark), TV Azteca, S.A. de C.V., Twentieth Century Fox Film Corporation, ESPN Inc., Turner Network Television, Inc. and Univision Communications Inc. have enough resources and know-how to strongly defend their trademarks and broadcasting rights in their own. Why then spending taxpayers money in defending them in an ex officio infringement action?

Without a proper and thorough justification about the higher good it pursues with the ex officio infringement action, the effectiveness of such procedures may be affected and the MPTO risks been seen as a government agency serving a few powerful interests instead of pursuing the common good. That would not be good for the MPTO, for the tradematk owners and for the IP system in general.

[1] El Financiero (Online edition: http://www.elfinanciero.com.mx/empresas/impi-investiga-a-sportflix-por-presunta-pirateria-de-contenido.html) Retrieved: September 28, 2017. Reforma (Online edition: http://www.reforma.com/aplicacioneslibre/articulo/default.aspx?id=1198259&md5=b2c3d9b354142bff90dd47d281c9c806&ta=0dfdbac11765226904c16cb9ad1b2efe) Retrieved: September 28, 2017.

[2] Ver https://www.gob.mx/impi/prensa/el-impi-realiza-acciones-respecto-de-sportflix-net

[3] Milenio (Online edition: http://www.milenio.com/hey/television/netflix-sportflix-ciudad_mexico-donde_ver-futbol-liga-partido-online-internet_0_1001299934.html) Date of review: September 28, 2017.

[4] La Afición (Online edition: http://laaficion.milenio.com/futbol/sportflix-deportes-streaming_deportivo-transmisiones_online-milenio-la_aficion_0_1004299573.html) Retrieved: September 28, 2017.

[5] https://mx.godaddy.com/whois/results.aspx?domain=sportflix.net&recaptchaResponse=03AOmkcwIA64Q5WivkGvjyQTh8xQIo3VgFOh6bts8-zI1fPrMn21x6wZ-gMGZ8CxE5MnLgaOrSk2lEJcrcQ2cfEbwZx_plEHDVPaoUFJLuPgqixFd44bSk-Qk1VjuKQOsMnsyMSHixNemCnDM0qcGPm7LjqDwngwsD0KRPWMkFGdrLqfIfcYLfof3Bamm6DymV_zSyk2A__w3enXdVhAoaGHaHMv7nAB8_rJOWf3frhdN9QCGhLWAKjLBsIiH4Gax9wnby45fbxaN–k0pWoJYJAEGGdVWSxFDPxifTNlcLNbpIIGl8qrUq3Nf_rY868mvGTMx8rhSPtlq. Retrieved: September 28, 2017.

La entrada The Mexican Patent and Trademark Office against the “Netflix of Sports”. se publicó primero en Reyes Fenig.

On November, 2016, the Weekly Journal of the Federal Judicial Branch published a non-binding decision by one of the panels of the Court of Appeals of the First Circuit, in Mexico City, regarding patent infringement.

Essentially, the court stated that there is patent infringement if the infringer, instead if using the invention according to the literal claims, obtained the same result by equivalent means, without involving an inventive step[1].

This is an important breakthrough in Mexican patent law. In a more general view, this is one of a significant number of relatively recent non-binding precedents from courts of appeals in Mexico City and the Specialized Panel in Intellectual Property of the Federal Court of Administrative Affairs (FCAA) that seek to improve the protection of IP rights in Mexico by means of a more liberal construction of the statutory causes of administrative infringement (punishable by the Mexican Patent and Trademark Office) provided in the Mexican Industrial Property Law.

This tendency of the FCAA and some courts of appeals in Mexico City was somehow announced by a non-binding precedent of 2013. In this precedent, the Eight Court of Appeals in Mexico City stated that the general provision against unfair competition provided by Section 213, paragraph I, of the Industrial Property Law may be considered as a last resource remedy that allows punishing actions that, in spite of harming IP rights, are not literally stated as administrative infringement in the Industrial Property Law.

For example, the Industrial Property Law does not state as a cause of infringement importing goods identified with trademarks identical or confusingly similar to one registered in Mexico to identify the same of similar products to the ones stated in the Mexican trademark registration. In order to cure that void, the FCAA ruled in a non-binding precedent published on August, 2015[2], that such an activity should be punished as unfair competition under the Industrial Property Law and the general provision against unfair competition (Section 213, paragraph I, of the Industrial Property Law[3]).

More recently, on March 2017, the First Court of Appeals in Mexico City published in a non-binding precedent[4] stating that importing a product using a registered industrial design may be punishable as administrative infringement under the general provision against unfair competition (again, Section 213, paragraph I, of the Industrial Property Law), in spite of the fact that importing goods that use registered industrial designs without authorization is not stated as an infringement in the Industrial Property Law.

Although the above-stated precedents are not binding, they are considered authoritative, so I expect that the Mexican Patent and Trademark Office and the FCAA will show a more favorable and flexible approach to infringement cases in the benefit of IP owners in the following months.

However, the liberal construction of the statutory causes of infringement provided in the Industrial Property Law has not been free of criticism. One important objection relates to a binding precedent from the Supreme Court[5] regarding the basic principles applicable to administrative infringements.

The Supreme Court ruled that some principles ruling criminal law are applicable to administrative infringements cases, namely, the principle about the definition of the offense or “tipicidad”: in order to make an action punishable, such action must be exactly stated as an offense in the statute. An action can’t be punishable using analogy or higher reason.

If the MPTO and the courts must construct the statutory causes of administrative infringement as narrowly as criminal offenses, I wonder if the flexible constructions of the general provision against unfair competition stated in paragraph I of Section 213 of the Industrial Property Law would meet the standard set by the Supreme Court.

[1] “Patente. La interpretación periférica, por identidad o por equivalencia, constituye un método para definir si un tercero ha invadido en perjuicio de su titular los derechos que derivan de esa exclusividad dentro de un procedimiento de infracción” at Gaceta del Semanario Judicial de la Federación, Tenth Period, Number 36, Volume IV, November 2016, page 2412. Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=interpretaci%25C3%25B3n%2520perif%25C3%25A9rica&Dominio=Rubro&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=2013115&Hit=1&IDs=2013115&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=.

[2] “Infracciones en materia de comercio. El abandono de la mercancía en aduana no exime de que se constituya una conducta infractora originada en la motivación psicológica del dolo al momento de realizar la importación” at R.T.F.J.F.A., Seventh Period, Year V, Number 49, August 2015, page 468.

[3] Section 213.- “It is an administrative infringement: I. Taking any action against the good uses and customs in industry, trade and services that imply unfair competition and related with the subject matter regulated by this Act”.

[4] “Diseño industrial. La importación de un bien protegido por un registro relativo sin consentimiento de su titular, constituye un acto contrario a los buenos usos y costumbres en la industria o comercio”, at Gaceta del Semanario Judicial de la Federación, Tenth Period, Number 40, Volume IV, March 2017, page 2695. Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=IMPORTACI%25C3%2593N%2520DE%2520UN%2520BIEN%2520PROTEGIDO%2520POR%2520UN%2520REGISTRO&Dominio=Rubro&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=2013984&Hit=1&IDs=2013984&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=.

[5] “Tipicidad. El principio relativo, normalmente referido a la materia penal, es aplicable a las infracciones y sanciones administrativas” at Semanario Judicial de la Federación y su Gaceta, Ninth Period, Volume XXIV, August 2006, page 1667. Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/ResultadosV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=174326&Dominio=Rubro&TATJ=2&Orden=1&Clase=TesisBL&bc=Jurisprudencia.Resultados&TesisPrincipal=TesisPrincipal&InstanciasSeleccionadas=6,1,2,50,7&Hits=20.

La entrada A court opens the door to the Doctrine of Equivalents in Mexico 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.

One of the topics around Joaquín “Chapo” Guzmán that has deserved a place in the recent news relates to trademarks. The press informed that there were attempts to register different versions of the name and nickname of Joaquín Guzmán Loera as a trademark. The applicants were Alejandrina Gisselle Guzmán Salazar (marks “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN”), Emma Coronel Aispuro (mark “JOAQUÍN ARCHIVALDO GUZMÁN LOERA EL CHAPO GUZMÁN”) and María Alejandrina Salazar Hernández (marks “EL CHAPITO” y “EL CHAPITO GUZMÁN”).

María Alejandrina Salazar Hernández (María Salazar) was the Drug Lord’s first wife[2], Emma Coronel Aispuro (Emma Coronel) is the current wife of Guzmán[3] and some say that Alejandrina Gisselle Guzmán (Alejandrina Guzmán) is the daughter of Guzmán Loera^[4].

I do not know if any of the applicants were following Guzman’s instructions, but it is important to highlight that no application was filed by Joaquín Guzmán Loera or on his behalf, as some media has incorrectly stated.

On September 24, 2010 Alejandrina Guzmán and María Salzar filed trademark applications for different marks. Alejandrina Salzar applied for the registration of the marks “EL CHAPO”, “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN” and María Salazar filed for the marks “EL CHAPITO”, “EL CHAPITO GUZMÁN” and “DON CHAPO GUZMÁN”[5]

Alejandrina Guzmán’s trademark applications for “EL CHAPO GUZMÁN” covered products of International Classes 14 (jewelry and watches)[6], 18 (articles made of fur, leather and leather imitation), 25 (clothing, footwear and headgear), 28 (toys and sports articles) and services of International Class 35 (advertising and business direction). The applications for “EL CHAPO” referred to goods and services of International Classes 14, 18, 28 and 35. The applications for “JOAQUÍN EL CHAPO GUZMÁN” were filed in International Classes 14, 18 and 25.

María Salazar filed applications for “EL CHAPITO” and “EL CHAPITO GUZMÁN” in International Classes 14, 18, 25 and 35. She also filed an application for “DON CHAPO GUZMÁN” in International Class 33 to identify alcoholic beverages except beer.

On August 2011, the “Instituto Mexicano de la Propiedad Industrial” or Mexican Patent and Trademark Office (MPTO) issued the final refusal to all trademark applications that María Salazar filed (“EL CHAPITO”, “EL CHAPITO GUZMÁN” and “DON CHAPO GUZMÁN”).

As for the filings of Alejandrina Guzmán, the MPTO approved the four applications for “EL CHAPO” (trademark registrations 1205096, 1205097, 120509 y 1219281) and rejected the applications for “JOAQUÍN EL CHAPO GUZMÁN”.

The decisions regarding the rejections of the trademark applications for “EL CHAPITO GUZMÁN”, “DON CHAPO GUZMÁN”, “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN” basically state that the aforementioned marks are expressions used to identify an individual that, back then, was wanted by federal authorities in connection with several felonies, thus they were against morale and good uses and non-registrable, as provided by section 4 of the Industrial Property Law[7].

A few years later, on October 2014, Emma Coronel (current wife of Guzmán) filed trademark applications in Classes 9, (electronics, software and computers), 16 (printed materials, stationary), 25 and 41 (education and entertaining) for “JOAQUÍN ARCHIVALDO GUZMÁN LOERA EL CHAPO GUZMÁN”.

On April 2015, the MPTO objected the trademark applications stating, on one hand, that the law prohibits registering the names or aliases of actual people without authorization; on the other hand, the examiner stated that the name of an individual that was being prosecuted could not be registered as a trademark because it was against moral and good uses. Emma Coronel did not answer the office actions and the applications became abandoned.

I do not want to discuss here what are good uses and what is moral or immoral. Some conducts that may be immoral or unbearable for some people are completely justifiable for others. Even in the case of individuals that the State itself may consider as enemies, the conflict may have many different reasons and there can be disagreement about the morality of their actions, even inside the same community. Nevertheless, I think the decisions of the MPTO to reject the trademark applications for the name and pseudonyms of the leader of one of the largest criminal organizations in Mexico were reasonable. The trademark system is no intended to protect the name of a felon that is responsible, directly or indirectly, for the suffering, torture and death of thousands in Mexico, including several actual journalists.

Then, why the MPTO issued to Alejandrina Guzmán trademark registrations for “EL CHAPO” in four different classes of goods and services and at the same time rejected the trademark applications for “EL CHAPITO” filed by María Salazar?

As I stated before, in some regions of Mexico the word “chapo” is used to designate short people, without making any reference to illegal activities. I remember the skillful Mexican midfielder Luis Montes (currently playing for Leon in the Mexican First Division), who is called “Chapo” or “Chapito”, and his nickname has never been linked or construed as an evocation to Joaquin Guzmán Loera.

If “chapo” is a nickname without negative connotations widely used in Mexico, my guess is that the examiner thought he did not have solid grounds to state that “chapo” is a word intrinsically immoral or against good uses, so his only option was approving the registration of “EL CHAPO” filed by Guzmán Salazar.

Further, there are several trademark registrations owned by other people that involve the mark “EL CHAPO” to distinguish different goods and services.

The MPTO issued several registrations for “EL CHAPO DE SINALOA” (translated as “The Chapo from Sinaloa”) in the name of Ernesto Pérez Zagaste. Apparently, Mr. Pérez is a singer of one kind of Mexican folk music called “banda” that uses “EL CHAPO DE SINALOA” as artistic name.

Mr. Pérez claims in his website that he was born at the county of Badiraguato, in the Mexican state of Sinaloa; the Drug Lord Joaquin “Chapo” Guzmán is also from Badiraguato, Sinaloa.

Mr. Ernesto Pérez also owns Mexican trademark registrations numbers 1,116,647 and 1,131,017 for the mark “EL CHAPO”. The MPTO issued the registrations in 2009 to identify Class 09 goods (cds, dvs, software, lenses and computer equipment are classified in Class 09) and Class 41 services.

Another individual, María de los Ángeles Moreno Rodríguez registered the trademark “EL CHAPO” to identify clothing, shoeware and headgear (trademark registration number 948,388) since August 2006. Ms. Rodriguez filed a trademark application (serial 796,602) on July 2006 for the mark “LOS ZETAS” also in Class 25. “Los Zetas” is the name of one of the most violent criminal organizations in Mexico. The examiner objected the application for “LOS ZETAS” on grounds of the statutory prohibition provided in section 4 of the Industrial Property Law, the applicant did not answer and the application became abandoned.

The MPTO did not refuse the applications for “EL CHAPITO” that Ms. Maria Salazar filed, on grounds of defense of morality or good uses. The reason was that “EL CHAPITO” was confusingly similar the earlier filed trademark “EL CHAPO” by Alejandrina Guzmán to cover the same products and services in Classes 14, 18, 28 and 35 and confusingly similar to the senior trademark registration of Ms. Moreno “EL CHAPO” in Class 25.

I do not know why María Salazar filed for “EL CHAPITO” and Alejandrina Guzmán for “EL CHAPO”, but the fact was that Alejandrina Guzman filed first (just for a few minutes, but first), thus her applications anticipated the trademark applications for “EL CHAPITO” and were the cause of the rejections. If the applications for “EL CHAPITO” and “EL CHAPO” would have been filed in the name of the same person, the chances of obtaining the registrations for “EL CHAPITO” would have been better, at least in Classes 14, 18, 28 and 35.

Meanwhile, a collateral victim of all the noise around the trademarks of “El Chapo” could be Luis “el Chapo” Montes who, in order to avoid misunderstandings or inconvenient associations, could ask the fans and the press to stop using the nickname “Chapo” or “Chapito” when speaking or writing about him. Would he like to be called Luis “Shorty” Montes?

[1] One of the most important and authoritative dictionaries in the Spanish-speaking world is the one that the Real Academia Española (based in Spain) publishes. The dictionary of the Real Academia defines “chapo” as “substantive male and female, colloquial in Mexico. Person of short height”. The original entry is: chapo, pa 1. m. y f. coloq. Méx. Persona de baja estatura. Real Academia Española [Online edition] http://dle.rae.es/?id=8azLK4e. Date of review: January 14, 2016.

[2] “Las Mujeres del ‘Chapo’ Guzmán” at Zócalo Saltillo, June 24, 2012 [Online edition] http://www.zocalo.com.mx/seccion/articulo/las-mujeres-del-chapo-guzman. Date of review: January 28, 2016.

[3] “Emma Coronel Aispuro es la esposa de Joaquín ‘El Chapo’ Guzmán”, at People en español, January 13, 2016 [Online edition] http://www.peopleenespanol.com/article/emma-coronel-aispuro-es-la-esposa-de-joaquin-el-chapo-guzman. Date of review: January 14, 2016.

[4] “‘El Chapo’ Guzmán trató de registrar su nombre como marca” at Excélsior, January 12, 2016 [Online edition] http://www.excelsior.com.mx/nacional/2016/01/12/1068422. Date of review: January 14, 2016.

[5] It is likely that María Salazar and Alejandrina Guzmán were coordinated. They filed the applications on the same date just a few minutes apart and hired the same attorney.

[6] The goods and services listed in this article are just examples of the products and services described in the applications, not the actual descriptions.

[7] Section 4 of the Industrial Property Law states as follows: Section 4.-  No patent, registration or authorization shall be issued, and no action or right shall be published in the Official Gazette, when their content or form are against public order, morale or good uses or any legal provision.

La entrada The Drug Lord and the Trademark se publicó primero en Reyes Fenig.