Today, Mexico protects (through registration with the Mexican Patent and Trademark Office (MPTO)), the following distinctive signs:

1. Visible signs, such as words, letters, numbers, names, slogans, two dimensional devices and drawings with or without colors.
2. Holographic signs (New!)
3. Three dimensional shapes
4. Sounds (New!)
5. Scents (New!)
6. Trade dress. (New!)[1]
7. The combination of the aforementioned signs.

The above does not mean that, in the past, Mexico did not provide protection to sounds, scents, holographic signs and trade-dress. However, since those signs were not recognized as trademarks, the protection was granted trough more general actions against unfair competition.

The fact that there are distinctive signs that were not registerable, and now can be registered as trademarks, has some important implications, especially in view that registration in Mexico, not use, is the source of the exclusivity rights. Therefore, current users of non-traditional trademarks should hurry to file the application and have the sign registered, regardless any prior use in Mexico. Without a trademark registration (or at least an application) in Mexico, such signs may not be licensed or assigned in our country. Furthermore, a competitor may register an identical or similar sign and then oppose the use by the earlier user. Of course, the first user may have a defense available[2] and action to invalidate the third party’s registration[3], but undoubtedly such a first user would be in a difficult position.

Applying for non-traditional trademarks.

For the purposes of this post, I will only refer to holographic signs, sounds, smells and trade dress, that is, the signs that were not even considered trademarks before the 2018 amendment to the Mexican statute.

I. Holographic signs.

Holographic signs may be registered as a trademark. Aside of the regular data usually provided in a trademark application, the applicant must state a description of the holographic sign and file a specimen of the hologram showing the full holographic effect, or different views of the sign from different angles.

Before the amendment to the law in 2018, many users of holograms seek trademark protection by registering them as regular drawings or word+design trademarks. Now that holograms can be registered as trademarks, there are questions about if the use of a hologram would be regarded as use of a registered trademark referred to a regular design for the purposes of maintenance of the trademark registration and defense against a cancellation action due non-use.

II. Sounds

A sound can be protected as a trademark, provided that it is distinctive. It can be a tune, a noise or a combination thereof.

The applicant must provide a description of the sound and, optionally, a graphic representation of the sound, such as the score of the tune or the drawing of the soundwaves. In any case, the applicant must file an unprotected digital file with the sound (.avi, .mp3, .mp4, .wma, .wmv, .wav or .m4a), so the examiner may reproduce it and make it available for the public in the site of the Mexican Patent and Trademark Office. Although the Mexican Patent and Trademark Office has registered a human voice making a sound (i.e. trademark registration 2,038,934 issued on September 19, 2019), it is yet unclear to me if a jingle (music and lyrics) could be registered in Mexico as a sound trademark.

III. Scents

Distinctive scents may be registered as a trademark.

Besides the general data required for all trademark applicants (name, address, nationality, products/services to be distinguished with the scent), the applicant must describe the scent and may choose to file a sample of product with the distinctive smell. The filing of the product with the trademark application is not compulsory, but the examiner may request it during the examination.

Scent trademarks pose many challenges. There are no rules about how to describe a scent. A description may resemble a wine taste description (i.e. registration 1,966,698 for the scent of Hasbro’s Play Doh: “sweet combination, a little mossy, with faints of vanilla, some cherry aroma and the natural odor of a wheat-based salty mass”… Play Doh will never be the same to me). Other scent descriptions have been plain and simple, such as “bamboo” (registration 1,966,701 for a scent of paint).

There are also questions about how effective is the publication of the issuance of the trademark registration in the Official Gazette as a way to inform the public about what scents are registered (a written description may not be specific enough).

IV Trade-dress

As in the case of other non-traditional trademarks, the applicant for a trade-dress registration must state, besides the general data required for all trademark applications, a written description of the operative and/or image elements that the comprised in the trade-dress, and images of all elements stated in the description.

The MPTO has registered as trademark the trade dress of a can (registration number 2,025,132) a plant pot (registration number 1,966,699) and a dark green bottle with a yellow holed strip around the neck and a rectanglar yellow label on the front (registration number 2,053,192).

The most frequent problem that trade-dress applicants have faced is related to the description of the operative and/or image elements that comprise the trade dress. Examiners often argue that the description is not thorough enough or that it states elements that are not actually part of the trade-dress, such as a traditional trademark (name, word or phrase).

Surprisingly, it seems that the MPTO has not issued any trademark registration for the trade dress of premises, such as restaurants, stores, garages or gas stations.

Franchisors should be particularly mindful of obtaining a trademark registration for all the licensed trademarks, including trade-dress. 

Remember: Trade-dress is a trademark now. It is not illegal in itself using unregistered trademarks, but a franchisor can’t license what it does not own. Due statutory provision, a trademark –including trade-dress- may be licensed only if there is at least a trademark application in Mexico. Furthermore, a third party could register a similar trade-dress to the one the franchisee has the obligation to use under the franchise agreement; in such a scenario, the franchisee may become a trademark infringer, creating potential liability issues also for the franchisor.

Mexican law does not demand proving intrinsic or acquired distinctiveness of trade dress. Actually, trade dress can be registered as a trademark without any use in Mexico or abroad.

[1] The amended statute defines trade dress as the set of operative or image elements (including size, design, color, layout, label, packaging, decoration) that, combined, distinguish a product or service in the market. See article 89, paragraph VII of the Industrial Property Law, as amended on May 18, 2018.

[2] Article 92, paragraph I, of the Industrial Property Law states that a trademark registration is not enforceable against a third party that, in good faith started using in Mexico the same or a confusingly similar trademark to identify the same or similar goods or services, before the filing/priority date or the date of first use, provided that such use in Mexico has been continuous.

[3] According to article 151, paragraph II, of the Industrial Property Law, a trademark registration may be invalidated if a third party started using, in Mexico or abroad, an identical or confusingly similar trademark to identify the same o similar products or services, provided that such use has been continuous. The statute of limitations to file such an action is five years counted from the date of publication of the registration in the Official Gazette.

La entrada Protecting non-traditional trademarks in Mexico se publicó primero en Reyes Fenig.

The number and relevance of the amendments are so big that I can’t refer to all of them in this post. Instead, I will briefly explain the changes that I believe are most relevant:

One very important change that I must refer right now is that the declaration of actual and effective use to maintain trademark rights in Mexico has been reinstated (see paragraph 11 below).

1. State of being in force: The amendments to the Statute will become in force on August 10, 2018.
2. Rules of the Statute: The implementation of the amendments will demand changes in the Rules of the Statute. As for today (June 17, 2018), the new Rules have not been published.
3. Protection of non-traditional Trademarks: The idea that only a visible sign could be protected as trademark is in the past. The amended Statute now explicitly provides that visible signs (including holographic figures), sounds, scents and trade-dress may be registered as trademark[1].

There is still no information about how applicants will have to describe a non-traditional trademark in the application; such information should be stipulated in the amended Rules of the Statute to be published soon (Update June 3, 2020: On September 3, 2019, the Mexican Patent and Trademark Office published the guidelines about trademark applications for non-traditional trademarks. Click here for more information.)

4. Trade-dress as Trademark. This is a delicate subject for merchants, service providers and manufacturers that rely on trade-dress to identify and distinguish their goods and services from competitors. If trade-dress is now registrable as a trademark[2], it means that Mexico will acknowledge exclusivity rights on trade-dress, but such an exclusivity right will be granted to the first filer; any other individual or entity using confusingly similar trade-dress may become an infringer. Therefore, trade-dress users should hurry to file the trademark application as soon as the amendments enter in force. 
5. New restrictions to register Trademarks. As the amendments allow a wider variety of signs to be registered as a trademark, there are new and, in some cases, clearer causes of refusal of trademark registration. There are several changes, but the ones that particularly called my attention, were the explicit prohibition to register marks filed in bad faith; words that reproduce Appeals of Origin and Geographic Designations; and words identical or confusingly similar to the title of literary or artistic works or the reproduction or imitations of elements of such works.
6. Secondary meaning. A mark that could be originally regarded as descriptive or generic mark may be registered if the applicant shows that it has developed a secondary meaning as a consequence of the use in commerce. Although this is a new provision in the Statute, the possibility of allowing the registration, as a trademark, of a descriptive or generic mark due secondary meaning was already stated in Mexican law through article 15.1 of TRIPS and some bilateral commercial treaties, as the Free Trade Treaty between Chile and Mexico[3]. 
7. Effectiveness of Coexisting Agreements. Amended article 90 of the Statute makes written agreements between trademark owners and applicants, allowing the last overcoming an anticipation, binding for the Mexican Patent and Trademark Office (MPTO), in the case of confusingly similar trademarks. If the trademarks were identical, in any aspect (phonetic, graphic or ideological), the MPTO may reject the consent and refuse the application.

The formal requirements of the agreement will be determined by the soon-to-be-issued Rules of the Statute. 

8. Certification Trademarks. Mexico will allow Certification Trademarks.
9. Description of Goods and Services. Amended article 113, paragraph IV, of the Statute, now demands applicants to state the specific goods or services to be identified with the trademark. It is not clear what the law means with “specific” although it seems that the intention is ending the practice of using the headers of the International Classes as description of products and services in the application.
10. More complex oppositions. Originally, anyone could file an opposition against a trademark application if it was filed on time and the government fee was paid. Now, opposers will have to prove legal standing.

Further, there is now a more detailed regulation about the evidence that may be filed in the opposition proceeding. 

11. Statement of use. Right-holders of trademark registrations issued on August 10, 2018, and thereafter, will have to file a statement of actual and effective use of the trademark in Mexico, and a government fee, within a three-month term counted from the third anniversary of issuance of the trademark registration (See The new statement of use of registered trademarks in Mexico).

Failure to file the statement of use would cause the ipso iure abandonment of the trademark registration.

The statement of use has to be filed only once after the third year of registration, and again simultaneously with each future renewal. 

12. More restrictive renewals. In order to renew a trademark registration, the trademark owner or the agent will have to state that there has been actual and effective use of the trademark. More important, the use of the registered trademark in one Class of goods or services will no longer benefit other registrations for an identical trademark in other Classes for renewal purposes.

Use on just one of the goods or services stated in the registration would be enough to support the renewal for all products and activities listed in the registration.

This rule will apply to all renewals filed on August 10, 2018, and thereafter, not only registrations issued after that date.

13. Additional cause of invalidation and longer term. The amendment added, as cause of invalidation of a trademark registration, the filing in bad faith of the trademark application. It is not clear yet what would be considered “bad faith” in order to make a registration vulnerable to the cause of invalidation.

The term provided in the statute of limitations to file the invalidation action against a trademark registration due earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark, applied to the same or similar goods or services, has been extended from three to five years, counted from the date of publication of the trademark registration in the Mexican Official Gazette.

The new cause of invalidation and extended term will only affect trademark registrations issued on August 10, 2018 and thereafter, regardless the date of application.

14. Notifications. Decisions and office actions issued in connection to a trademark application shall now be electronically notified through the Official Gazette.

Officials of the MPTO have explained that the objective of the amendments to the Statute is modernizing and harmonizing the Mexican industrial protection system, according to the current international trends of trademark law. I wonder is such modernization responds to the actual needs of domestic businesses or if it was an extra-logical imitation. Other amendments, such as requesting a statement of use after the third year of issuance of the trademark registration, seem an excessive burden on trademark owners, with no benefit in return.

[1] Article 89, paragraphs V, VI y VII, of the Industrial Property Law, as published in the Official Journal of the Federation on May 18, 2018.

[2] For registration purposes, trade-dress is defined as “the set of different operative elements, image elements, including size, design, color, form disposition, label, package, ornaments or any other that, in combination, allow the identification of a product or service in the market”. Article 89, paragraph VII, , of the Industrial Property Law, as published in the Official Journal of the Federation on May 18, 2018.

[3] Article 15-15.1 of the Free Trade Treaty between the Republic of Chile and the United Mexican States, published in the Official Journal of the Federation on July 28, 1999.

Diario oficial 18-may-18 (marcas)

La entrada Mexico starts a new era in Trademark Law (the amendments of May, 2018) 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.