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.

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.