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 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.

Almost three years have passed since the implementation of the Madrid Protocol in Mexico, and I can now explain some of, in my opinion, the most usual problems for Madrid applicants when filing in Mexico.

Translations of goods and services.

It seems silly, but mistranslations seem to be the most common issue with Madrid Registrations in Mexico. Needless to say, a mistranslation can be a serious problem.

I do not know how the World Intellectual Property Organization (WIPO) translates the descriptions of goods and services (i.e. if it uses software without human intervention), but the fact is that errors in translations are not uncommon, and they may cause an objection from the Mexican examiner because a translated word does not make sense in the context of the application or because it creates a conflict with the Class stated in the application. Then, the applicant has to retain a Mexican attorney to explain the Mexican Patent and Trademark Office (MPTO) that there was a translation error by WIPO and provide the examiner with the correct description in Spanish.

The intervention of the local counsel requires filing an original power of attorney from the applicant, so answering an office action demands more paperwork that just preparing a response.

In the worst-case scenario, an error in the translation may go undetected by the Mexican examiners, causing that the trademark rights granted in Mexico do not include the product or service the applicant actually wanted to be covered by the trademark and was incorrectly translated into Spanish. Of course, errors in translations are not exclusive of International Registrations; they may also happen with regular trademark applications, but the local counsel is supposed to be more cautious.

Mexico is one of the countries that allow the use of the Class headers to describe the goods or services covered by a trademark application, although there is no actual “full-class” coverage (Update September 17, 2018: Starting August 20, 2018, using the header of the Class is no longer acceptable in Mexico. See Mexico starts a new era in Trademark Law (the amendments of May, 2018)).

However, some expressions used in many jurisdictions, such as “accessories and parts thereof” may be objected by the Mexican examiners, due lack of specificity. Actually, this is a problem for all trademark applicants, not for Madrid users only. The applicant has to delete “accessories and parts thereof” or provide a list of all the “accessories and parts thereof” covered by the registration in the same Class.

Multiple-Class Applications.

Mexico does not allow multiple-Class applications, but the Madrid System allows multiple-Class International Registrations.

In order to deal with this inconsistency, the MPTO “divides” multiple-Class International Registrations in as many applications as International Classes are involved, and examines each of this “applications” independently. When the MPTO approves the protection in certain Class, it issues a local trademark registration for that Class. A local trademark registration is also issued in case of single-Class International Registrations.

Sometimes the examiner disagrees about the classification of the goods and services listed in the International Registration. If the International Registration is multiple-Class, the examiner may simply “move” the relevant goods or services to the “correct” Class, if the Registration includes such “correct” Class. If not, the examiner will request the applicant to delete the goods or services that do not belong in the Class stated in the Registration.

The applicant has a two-month term to answer the office action, with a two-month automatic extension.

One big inconvenient of the MPTO’s practice of dividing mutiple-Class International Registrations in as many local applications as Classes are involved, would be related with the appeal against a final total refusal. Instead one overall refusal, the MPTO will issue one refusal per Class and the applicant would have to file one appeal per refusal, multiplying the number of appeals and increasing the costs.

Substantive Examination

The substantive examination of International Registrations is basically the same than with regular trademark applications. However, examiners may check the decisions of other Trademark Offices, looking for absolute grounds of rejection that may not be evident for the Mexican authorities.

The applicant has a two-month term to answer a provisional rejection related to the substantive examination, with a two-month automatic extension.

(Update September 17 , 2018) Statement of use

International Trademarks that have been subject of a declaration of protection in Mexico issued on August 10, 2018, and thereafter, will have to file with the MPTO a statement of actual and effective use in Mexico at the third year after the issuance of the declaration of protection in Mexico.

The window is quite narrow, three months only. It starts on the day of the third anniversary of issuance of the declaration of protection and ends three months later. For example, if the declaration of protection in Mexico was issued on August 11, 2018, the window to file the statement of actual and effective use would open  on August 11, 2021 and close in November 11, 2021.

One declaration of use is due for each Class listed in the Interntional Registration. Failure to file the statement of use would result in the extintion of the protection in Mexico for the particular Class where the declaration was not filed.

Of course, this burden also affects nationally filed trademark registrations issued on August 10, 2018, and thereafter.

(Update March 7, 2019) The owner of the international registration must also file a statement of use in Mexico after renewing such an international registration, at the window of the MPTO, within a three-month term after WIPO notifies the MPTO about the renewal. In practice, this filing may be challenging and Madrid users must be carful. More information here.

Invalidation and Cancellation Actions.

This is still a theoretical risk, because I have not seen such a case yet, but we will have to deal with it sooner or later.

When a cancellation or invalidation action is filed against a Mexican trademark registration owned by a non-resident, the MPTO will serve summons through the local attorney of record that filed the trademark application, the last renewal or the last assignment.

However, a lot of Madrid Registrations do not have a local attorney of record, so it is no clear how these trademark owners will be summoned in case a third party files a cancellation or invalidation action. It is possible that the service of summons will be carried out through a special publication in the Official Journal of the Federation and/or the Official Gazette.

Summons served through publications in the Official Journal of the Federation are expensive and no easy to detect, especially for a foreign trademark owner. In that case, the invalidation or cancellation action may be served and decided without the actual knowledge of the registrant. By the time the owner of the International Registration finds that the protection in Mexico has been invalidated or cancelled, it could be too late to appeal or file some other legal remedy.

One way to prevent such an unfavorable scenario is appointing an attorney of record in all International Registrations and in each Class (remember, the MPTO will issue one trademark registration per Class) valid in Mexico. Of course it will cost money, but the trademark owner will have the certainty that, if someone challenges the validity of the trademark registration, a copy of the invalidation or cancellation action will be served to local attorney instead of being served through some hard to detect publication.

Hopefully, the more familiar the Madrid Protocol becomes for Mexican authorities and attorneys, better tools and remedies will be developed to make the system more efficient and reduce unfair situations as the one described above.

La entrada Some problems that Madrid users may face in Mexico se publicó primero en Reyes Fenig.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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.

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.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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.

Before the 2010 amendments, many activities associated to the infringement of IP rights in Mexico were already punished with extreme severity. For example, the willful production, distribution and importation of goods bearing counterfeited trademarks in commercial scale are delitos graves or felonies, thus the defendant is not allowed to be free on bail during the trial. In the same sense, the willful non-authorized reproduction of works protected by copyright in commercial scale is a felony too.

However, in all cases, in order to start an investigation, the holder of the copyright or registered trademark copyright had to file a querella or formal complaint. A characteristic of the crimes that require querella is that the right holder may stop the investigation or the trial by withdrawing the charges (perdón in Spanish).

The querella requirement could obstacle an investigation; for example, when officials of the Customs Agency or the General Attorney Office found and seized a shipment of counterfeited goods or illegal copies of works, without a querella, there was no justification to maintain the seizure of goods or authority to continue the investigation. Further, the formalities that have to fulfill a power of attorney required to file a querella can be very difficult to accomplish for foreign entities. As a result, a federal judge could dismiss a trial because the power of attorney of the representative of the right holder was missing some formal requirement.

As I said before, in the case of crimes that need a formal complaint, the copyright or trademark owner could terminate the investigation or even the trial with a perdón or withdrawal of charges. This possibility allowed the trademark or copyright holder to negotiate a settlement with the defendant, although this sort of negotiations often discouraged, even upset, the officials of the General Attorney Office.

Now, with the June 2010 amendment, many -not all- IP related crimes (most of them associated to copyright) will be investigated ex-officio.

In the copyright field, for example, willfully producing, reproducing, importing, transporting, distributing, selling (in a store) or leasing copies of copyright protected works, with commercial purposes and without authorization, is not only a felony but also will be investigated ex-officio. On the other hand, willfully selling unauthorized copies of copyright-protected works in the streets, with commercial purpose, is a crime that now will be investigated ex-officio, although it is not a felony.

In the trademark field, the June 2010 amendment did not change most of the crimes associated with trademark counterfeiting provided in the statute. Most cases of trademark counterfeiting remain being felonies, but they still need the formal complaint or querella filed by the trademark owner in order to be investigated.

Nevertheless, as a consequence of the June 2010 amendment, willfully offering in sale goods bearing counterfeited trademarks, in the streets with commercial purposes, is now a crime that may be investigated ex-officio although, paradoxically, it is not a felony.

The Federal Congress also amended some provisions regarding the preliminary measures that a trademark, patent or copyright holder may request from the Mexican Patent and Trademark Office (MPTO) to stop infringing activities, namely the requirements that the defendant must fulfill to lift such measures.

The most usual way to oppose infringement of IP rights –including most copyright infringement cases- is the administrative infringement action, filed with the MPTO. The MPTO has authority to issue preliminary measures. The preliminary measures may include the seizure of infringing products and an order to the infringer to stop the production of infringing products and recall the merchandise already in hands of distributors.

In order to obtain the preliminary measures, among other requirements, the defendant must file a bond. The purpose of the bond is to guarantee the payment of the actual damages that the preliminary damages may cause to the defendant in case the MPTO decides there was no infringement.

The defendant is allowed to lift the preliminary measures and continue it business as usual, by filing another bond. The purpose of the bond is to guarantee the payment of the damages that the defendant’s activities may cause to the plaintiff.

In practice, the MPTO has not enough data, if any at all, about the amount of the possible damages that the preliminary measures may cause to the alleged infringer, thus the MPTO sets the amount of the bond at it own discretion. Sometimes, the plaintiff files the bond with the MPTO before it accepts to issue them; if it is high, there is a good chance that the MPTO will accept it, although technically it is an arguable practice.

If after the enforcement of the preliminary measures, the MPTO believes that the amount of the bond is too low, it has authority to request the plaintiff to increase the bond, within a three or five days term. Failure of the plaintiff to increase the bond would result in the lift of the preliminary measures.

Once that the preliminary measures have been enforced, the alleged infringer has the right to lift them, y filing another bond. The purpose of this bond is guaranteeing the payment of the damages that the alleged infringing activities may cause to the plaintiff. The practice of the MPTO was to set the amount of the defendant’s bond in twice the amount of the bond filed by the plaintiff.

Now, the amended statute stipulates that the bond that the defendant may file shall be 40% higher than the bond filed by the plaintiff. Nevertheless, the MPTO keeps authority to request the increase of the amount of the bonds filed by the plaintiff or defendant, in case it considers that their amounts are not high enough to guarantee the payment of the damages.

Finally, it is now an administrative infringement that the patent holder, or the recorded licensee (if the recorded license does not provide against the filing of infringement actions against third parties), files an infringement action against a third party, if there was an earlier final decision ruling that there was no patent infringement involving the same cause of infringement.

From my perspective, this new cause of infringement is odd, and I can only understand it as a way of refraining innovative pharmaceutical companies from harassing generics manufacturers with constant infringement actions repeating the same causes of infringement, assuming of course that the efforts of the patent holders to enforce their patent rights can be generally qualified as ‘harassment’.

The amendments to the Federal Criminal Code suggest that there is an intention to increase the fight against piracy, although it also shows lack of a coherent strategy, given the different treatment to crimes associated to trademarks and those related to copyright, and the inconsistencies in each field.

Only time will tell if the will to combat piracy is real, or only a measure to cool down Mexico’s trade partners, mainly the United States, who kept Mexico is the Watch List of the 2010 Special 301 Report.

La entrada Amendments to the Mexican statutes toughens (and softens) fight against piracy and IP infringement se publicó primero en Reyes Fenig.