On the other hand, it seems that there is the generalized idea among law-makers and government officials that amending the statutes to make the penalties therein stipulated more severe is an effective way to discourage illicit activities, thus somehow curing the lack of effective enforcement.

In this sense, on January 12, 2012 the Federal Journal of the Federation (official communication channel of the Federal Government) published several procedural and substantive amendments to the Industrial Property Law.

Some amendments, such as the ones aimed to ease the service of official communications and decisions issued by the Mexican Patent and Trademark Office (MPTO), only concern Mexican practitioners and I am not going to discuss them here.

Other more interesting amendment duplicates the fines associated to trademark, copyright and patent infringement in case of bad-faith infringers, and stipulates a presumption of bad-faith infringement.

If the trademark, copyright or patent owner marked the product with a warning about the existence of an exclusivity right (including but not limited to the © symbol with the date of first publication/disclosure of the work, name and address of the copyright holder; Patentado or equivalent; ®, M.R., Marca Registrada or equivalent) or published a warning about such an exclusivity right in a nationwide newspaper, then the infringer is presumed to be a bad-faith infringer and the amount of fine must be automatically doubled. It is my opinion that such a bad-faith presumption is a iuris et the iure presumption, that is, that the infringer may not file the evidence to prove on the contrary.

There is more information about the trademark and patent marking in our ealier post.

Although it is good to have more severe penalties for IP infringers, I believe that it would be better if the authorities work harder to effectively enforce the provisions we already have. For example, the MPTO may take almost one month to issue a preliminary measures order (similar to an injunction) in a patent or trademark infringement case, reflecting a lack of sense of urgency (to say the least) completely inconsistent with the purposes of the preliminary measures.

Rather than amending laws and regulations, we need a change of attitude about what it means to be the administrative authority in charge of enforcing IP rights.

La entrada An amendment in the Industrial Property Statute increases fines for bad-faith infringers in Mexico se publicó primero en Reyes Fenig.

Before the 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.

The purpose of this post is offer a basic explanation about precedents in Mexico and their effectiveness in IP-related cases.

When I say “precedent”, I am referring to a published decision issued either by one of the salas or chambers of the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA), a tribunal colegiado de circuito court of appeals or the Supreme Court. It does not mean that there are no precedents from the MPTO. The MPTO is the first instance in most patent and trademark infringement or invalidation cases, so of course there are precedents, but they are not reported or collected. Mexican lawyers learn about the precedents of the MPTO from our own experience and interchange of ideas with other lawyers and sometimes with the MPTO’s officials. Although the MPTO does not have to follow its own precedents, it always has to state the statutory provisions applicable in each case and explain the reasons of all the decisions it issues.

About the decisions of the courts, it is necessary to distinguish different situations.

First. All the decisions from the federal courts (Mexico is a federal republic, so there are also state courts; the availability of decisions from state courts vary from state to state) become public shortly after they are issued, although the information about the involved parties may not be available in most cases. This situation makes it difficult locating certain decisions if you do not have information about the case number and the court that issued the decision you are looking for.

Second. The decisions of the juzgados de distrito or federal district courts and tribunals unitarios de circuito or higher federal courts are not reported or collected, thus there are almost no references to district courts or higher federal courts as source of precedents.

Third. When a court of appeals, a chamber of the FCTAA or the Supreme Court considers that the legal issues involved in a case are particularly relevant, it may decide to prepare an abstract about the ruling (we call it tesis) and publish it in a collection of precedents issued every month: the Semanario Judicial de la Federación or Weekly Judicial Journal of the Federation (it is no longer weekly, but it kept the name) in the case of the courts of appeals and the Supreme Court, and the Revista del Tribunal Federal de Justicia Fiscal y Administrativa or Journal of the Federal Court of Tax and Administrative Affairs in the case of the chambers of the FCTAA. These published rulings constitute the precedents.

The abstract of the ruling includes the identification of the issuing court and the case number, so it is relatively easy to obtain a copy of the actual decision and get a deeper knowledge about the reasoning behind the precedent.

In a broad sense, the collection of published precedents is called jurisprudencia; in a more restrictive and technical sense, only the binding precedents are jurisprudencia. Jurisprudencia is often translated into English as ‘jurisprudence’, although the concept is much narrower under Mexican law.

Fourth. In general terms, a precedent becomes binding or jurisprudencia when the ruling has been confirmed in five consecutive decisions –in the case of courts of appeals and the Supreme Court-. A decision may also become binding when different courts of appeals, or the two specialized chambers of the Supreme Court, render contradictory rulings about the same legal issue and the Supreme Court decides which ruling must prevail.

In the case of the FCTAA, it is divided in different chambers of three judges each. There is one chamber specialized in intellectual property matters that decides most appeals against the decisions of the MPTO and the Mexican Copyright Office. The specialized chamber of the FCTAA may publish precedents, but only the precedents of the Highest Chamber of the FCTAA may become binding, if and when a ruling has been confirmed by three or five consecutive decisions, or when it decides the prevailing ruling in the case of contradictory decisions between different chambers of the FCTAA.

Fifth. A precedent may become binding for lower courts, but not for higher or equal-ranked courts. The binding precedents from the Supreme Court and the courts of appeals are binding for all the chambers of the FCTAA.

The MPTO is not a court (even if it acts like one in infringement and invalidation cases) but an administrative entity. Therefore, the MPTO has no actual obligation to follow the binding precedents issued by the courts, although it usually tries to adjust its decisions to such binding rulings.

Further, it is very usual in the Mexican practice –the MPTO, courts and lawyers included- to rely on the authority of some non-binding precedents to justify decisions, opinions and claims.

La entrada A general view about precedents in Mexico se publicó primero en Reyes Fenig.

Nevertheless, Mexico acknowledges certain rights and defenses for the users of non-registered trademarks; Mexico also allows applicants to claim a date of commencement of use in Mexico, in order to obtain some benefits after the issuance of the trademark registration. In any case, these rights and defenses should not be construed as common-law rights (there is no common-law in Mexico) or exceptions to the first-to-file principle: the first applicant has priority to get the trademark registration, no matter who claimed the earliest date of first use or if the earliest applicant expressly stated that it has not started using the trademark at all.

In the same sense, only the registered owner of the Mexican trademark registration would have exclusivity rights on the trademark, regardless if a third party started using the same trademark before, even if the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) has acknowledged such earlier use.

Notwithstanding the above, the claim of the date of first use of the trademark in the application, may actually extend the scope of rights resulting from the registration, but may also create a significant vulnerability of the trademark registration against an invalidation action.

I. ACTIONS AND DEFENSES FOR THE EARLIER USERS OF NON-REGISTERED TRADEMARKS IN MEXICO

The first user of a non-registered trademark in Mexico is not acknowledged as the proprietor of the mark, thus it may not file trademark infringement actions against other users of the same mark for the same goods or services.

Nevertheless, in theory, the first user of the trademark could file unfair competitions actions against other users of the mark, but it has to prove an intention to deceive the consumers, or that the trademark is well-known; in practice, it is difficult to prevail if there is not a registered or well-known trademark involved in the unfair competition claim.

Notwithstanding the above, Mexican law provides a defense and an action to the first users of non-registered trademarks to oppose the holder of a trademark registration.

A. Defense against a trademark registration

The Mexican statute provides that a trademark registration is not enforceable against a third party that have used in good faith and in Mexico, an identical or confusingly similar trademark to the registered one for the same or similar goods/services, if such use in Mexico has been continuous and started before the filing date of the trademark application or before the date of first used stated in said application.

B. Action against a trademark registration

The user of a trademark may file an invalidation action against an identical or confusingly similar registered trademark, covering the same or similar goods or services, provided that said use is continuous, started before the filing date of the application or the date of first use stated in the application, if any.

The Mexican statute of limitations stipulates that the invalidation action has to be filed within a three years term after the publication of the registration in the Industrial Property Gazette.

This action is unique because it is not necessary to prove earlier use in Mexico. Earlier and continuous use in any country in the world would be enough to invalidate the Mexican trademark registration. It is not necessary to prove that the used trademark is well-known or famous in Mexico (there is another action for those cases), and there is no reciprocity requirement in case the use took place abroad.

II. BENEFITS FROM CLAIMING FIRST USE IN A MEXICAN TRADEMARK APPLICATION

Claiming a date of first use in a trademark application may provide important advantages compared with a trademark registration with no prior use claim, although the applicant may benefit from those advantages only after the issuance of the registration.

The first use claim does not expedite or delay the prosecution of the trademark application. It is not required to file a specimen of the product/or service and the MPTO would not demand evidence confirming the date of commencement of use.

The claim –or lack of claim- about the date of first use and the statement stating that the trademark has not been used in Mexico may not be amended.

1. Defense of the trademark registration against earlier users

If a third party wants to challenge the validity of a trademark registration due earlier and continuous use in Mexico or any other country (as explained in I.B above) of an identical or confusingly similar mark covering the same or similar products or services, and the challenged registration has a claim of first use, then the plaintiff has to prove that it started using the trademark before said date of commencement of use (and not before the filing date in Mexico as it happens with a “regular” trademark registration).

2. Enforceability against earlier incorporated legal entities that use the trademark without authorization in their corporate name

The general rule is that the owner of a trademark registration may file an infringement action against a company that uses, as part of the corporate name, the registered trademark without authorization of the trademark owner, provided that:

(i) The infringing company’s activities are related to the goods or services covered by the infringed trademark, and

(ii) The filing date of the infringed trademark registration is earlier than the date of incorporation of the infringing company.

The above is the general rule. However, if there was a claim of first use in the trademark application, the trademark owner may file the infringement action against companies that started using the mark in their corporate names before the filing date of the application in Mexico, but after the date of commencement of use stated in the application.

One matter that has not been clarified in connection with this cause of infringement (actually, with all causes of patent, trademark and copyright infringement) is associated to the statute of limitations. The special statutes are silent about this issue, but the more general Federal Law of Administrative Procedures (complementary to the special Industrial Property and Copyright statutes) states a 5 years term.

The existence of a statute of limitations in connection to the infringement of IP rights has so many important implications (such as when the term stated in the statute of limitations starts; in our case,  when the infringing corporation ws incorporated, when the infringing corporation ceases activities or when the infringing corporation is is dissolved) that discussing them requires another post.

3. Enforceability against earlier non-authorized users of the registered trademark

The general rule provides that a Mexican trademark registration is not enforceable against a third party that started using in Mexico, in good faith, and before the filing date of the Mexican trademark application, a mark identical or confusingly similar to the registered one to identify the same or similar goods or services.

However, a Mexican trademark registration would be enforceable against a third party that started using before the filing date of the Mexican registered trademark, the same or a confusingly similar mark in Mexico (even in good faith) applied to the same or similar goods and services, if there is a date of first use stated in the trademark application, and such date of first use predates the date the third party began using the mark.

III. RISKS ASSOCIATED TO THE FIRST USE CLAIM IN THE TRADEMARK APPLICATION

This is not a perfect world, and the benefits that may provide the claim about the date of first use of a trademark in the trademark application are not exempt of certain risk, namely the vulnerability of the trademark registration with the first-use claim against an invalidation action due false information stated in the application.

The statute provides as cause of invalidation of a trademark registration, stating false information in the trademark application. Such false information may refer to any of the data fields of the application, such as the applicant’s name, address, nationality, and of course, the date of first use.

The statute of limitations provides that an invalidation action against a trademark registration due false information in the trademark application may be filed within a five years term, counted from the date of publication of the registration in the Industrial Property Gazette.

When a third party files an invalidation action against a trademark registration, claiming that the date of first use stated in the trademark application was false, the burden of proof is on the trademark owner, who has to prove that the date of commencement of use in Mexico was correct.

Mexican law and courts are very formalistic, thus proving the accuracy of a date of first use can become an extremely difficult task.

A non-binding precedent from the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA), states that if the date of first use was inaccurate by just a few days, and the evidence shows that the trademark owner it started using the trademark long before the plaintiff, the trademark registration should not be invalidated*. I think that the FCTAA’s position is absolutely fair, but it is not fully consistent with the statutem and the precedent has yet to be confirmed to be binding.

(Update September 30, 2016. A binding ruling from a panel of appeal judges in the Mexico City Circuit ruled that the plaintiff has to prove that the date of first use was false or innacurate. This ruling significantly reduces the risk of having a registered tradematk invalidated because there was a date of first use. Read my post “New binding ruling benefits owners of trademarks registered in Mexico that claimed date of first use”.)

In order to prevent the vulnerability to an invalidation action due false information stated in the application, the general advice is that the date of commencement of use should have some documentary backup, namely invoices issued to customers located in the Mexican territory.

If the applicant is not certain that the trademark has been used in Mexico, or does not have any document to prove it, the usual recommendation is not stating a date of first use in Mexico, either by explicitly stating that the mark has not been used in our country, or by leaving the data field in the application blank.

Use by persons different from the trademark applicant, such as sister and parent companies and shareholders, as a general rule, may not be claimed in the benefit of the trademark applicant.

Some tips about the claim of first use:

(1) If the applicant has used the trademark on goods or services different from the ones stated in the trademark application, the applicant should not claim a date of commencement of use.

(2) In my opinion, if the applicant has used the trademark on one or a few of the goods or services listed in the trademark application, but not all of them, the applicant may claim a date of first use and such date would benefit all the products or activities listed in the trademark application.

It is important to say that this is my opinion; the statute is silent regarding this issue, and there are no published precedents supporting or rejecting my position.

(3) In my opinion, stating that the trademark has not been used, or leaving the field blank (there would be a statutory presumption that the trademark has not been used), in spite of the fact that the trademark has actually been used in Mexico, would not be a false statement that would make the registration vulnerable to an invalidation action due false information.

From my perspective, stating that the trademark has not been used or failing to make a statement at all, in spite that the applicant has used the mark, would be a valid and legitimate waiver of the right to claim the date of first use, given that no third party would be harmed in any way by such non-use statement.

Of course, my colleagues may disagree with my opinions, especially in the absence of explicit provisions in the statutes or judicial precedents. Hopefully, the courts will decide who is right in a not so distant future.

* See Journal of the Federal Court of Tax and Administrative Affairs, Era VI, Year I, No. 11, November 2008, page 587. This decision somehow confirms an old isolated non-binding ruling from a Federal Court of Appeals of 1990 (Weekly Judicial Journal of the Federation, Eight Era, Volume VI, Second Part-1, July-December 1990, page 198).

La entrada The relevance of the date of first use in Mexican trademark applications se publicó primero en Reyes Fenig.

According to the bulletin, the basic purpose of the amicus brief was to persuade the FCTAA to “reverse the decision rendered by IMPI (the Spanish acronym for the MPTO) and to interpret the law to provide Mexican trademark owners with the right to seek cancellation of a registration on the ground of bad faith, a right currently enjoyed by foreign trademark owners.”

Of course, as a Mexican lawyer, it was interesting to learn that INTA was involved in a Mexican case, but it was even more interesting that the basic purpose of the brief did not make much sense to me.

The Trademark Reporter (Vol. 99 July-August, 2009, No. 4), available online for INTA members, reproduces the amicus brief (in English) filed on behalf of INTA with the FCTAA.

The brief is related to an appeal associated to three trademark cancellation actions filed by a well-known large restaurant operator named Grupo Anderson’s, S.A. de C.V. (Grupo Anderson’s), against three different trademark registrations, and to section 151, paragraph V, of the Industrial Property Law.

The challenged trademarks cover the design of a frog character used mainly on apparel; the proprietor was Tiendas Oficiales, S.A. de C.V.

The brief does not disclose specific information about the challenged trademarks, but after a quick research, I suspect that they are Mexican trademark registrations Nos. 743,437 FACE OF FROG CHARACTER DESIGN (International Class 25) and 804,371 FACE FROG CHARACTER DESIGN (International Class 35).

By coincidence (or perhaps not), on April 2008, Tiendas Oficiales, S.A. de C.V. assigned the above-stated registered trademarks to a Mexican corporation named Grupo Serigráfico, S.A. de C.V.

The amicus brief also makes reference to a trademark registration in International Class 27 -an odd Class, considering that the trademark is mainly for clothing- for the FACE FROG CHARACTER DESIGN, but my preliminary search did not reveal it (finding out what registration that could be would demand spending some money and a more time-consuming research, which I am not interested to do for the time being).

The statutory provision

Section 151 of the Industrial Property Law stipulates five basic reasons to challenge a Mexican trademark registration:

I. Registration issued against a provision stated in the Industrial Property Law or in any other statute (including international treaties).

II. Earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark, covering the same or similar services or products.

III. False information stated in the application.

IV. Existence of an earlier Mexican trademark registration for an identical or confusingly similar mark, covering the same or similar products or services.

V. Registration of a trademark identical or confusingly similar to one already registered abroad, if the application was filed by an agent, representative, distributor or licensee of the trademark owner, without its consent. In this case, the statute explicitly provides the presumption that the trademark was in bad faith.

A Mexican trademark registration may also be cancelled due lack of use for three consecutive years in Mexico, on at least one of the products or services listed in the registration, and because the registered trademark became a generic expression.

The amicus brief explains that the cancellation actions against Tiendas Oficiales’ trademark registrations claimed that the defendant’s trademark registrations were not valid under paragraphs I, II, III, IV and V of section 151 of the Industrial Property Law.

An invalidation claim on the grounds provided in section 151, paragraph V, of the Industrial Property Law, would necessarily involve a licensee, agent, representative or distributor that registered, without authorization from the trademark owner, an identical or confusingly similar trademark already registered abroad.

According to the brief, the MPTO refused to cancel Tiendas Oficiales’ trademark registrations on the grounds provided by section 151, paragraphs I, II, III and IV, of the Industrial Property Law, but failed to make an explicit statement about the invalidation claim under paragraph V.

Such flaw should be enough to invalidate, at least partially, the MPTO’s decision, and allows the FCTAA to render a decision on the merits of the undecided invalidation claim.

The amicus brief states that section 151, paragraph V, of the Industrial Property Law, discriminates Mexican citizens and entities, because “a trademark registration may only be declared null and void on the basis that the mark was registered in bad faith in circumstances involving foreign trademark owners. As such, the owner of a Mexican trademark registration has no recourse against an agent, representative, licensee or distributor who applies to register an identical or confusingly similar mark in its own name without consent”.

Further, the brief states that section 151, paragraph V, of the Industrial Property Law is against section 1 of the Mexican Constitution (equal protection), articles 41, paragraphs 2 and 3, and 62, paragraph 4, of TRIPS and article 1708 of NAFTA.

I must say that I disagree with most of the arguments stated in the three substantive considerations provided in the amicus brief, and with the conclusions.

First consideration. Lack of cancellation procedures for trademarks registered in “Bad Faith” to Mexican Companies.

The first consideration is incorrect.

Paragraph V of section 151 of the Industrial Property Law provides a special protection for owners of trademarks registered abroad against unfair registrations by their licensees, distributors, agents or representatives, regardless the nationality of such trademark owners.

It is important to clarify that Mexico is a civil law country, with a first-to-file trademark system; although users of non-registered trademarks have some limited actions and defenses, there are no common law rights in our country. The only way to be acknowledged as trademark owner in Mexico is having a Mexican trademark registration. Further, the statute demands the existence of a Mexican trademark registration or application in order to license the mark in Mexico.

Therefore, in order to acknowledge a company as trademark owner in Mexico, the trademark must be registered in Mexico. If the licensee, distributor or agent registers a trademark identical or confusingly similar to an earlier registered or applied mark in Mexico, for the same or similar products or services (the earlier licensor’s trademark registration or application should block such an application by the licensee, but the MPTO sometimes makes errors), the senior trademark owner could file a cancellation action claiming that the licensee’s trademark registration is invalid under sections I (claiming the existence of a senior trademark application), II (earlier and continued use of the trademark) or IV (claiming the existence of a senior trademark registration), regardless if the licensee filed the application in bad or good faith.

Under Mexican law, if the licensee’s registration is for a trademark that is not identical or confusingly similar to the licensor’s mark, or for products or services different from the ones covered by the licensor’s trademarks, there would be no invasion of the licensor’s exclusivity rights; the licensee would not be registering the licensor’s trademark because it would not be the licensor’s trademark in the first place, either because the mark is different or because the covered goods or services are different (actually, from the amicus brief, this seems to be the reason why the MPTO refused to invalidate Tiendas Oficiales’ trademark registrations under section 151, paragraph IV of the Industrial Property Law).

Notwithstanding the above, a trademark registration acquired by a licensee for a trademark identical or confusingly similar to the licensor’s but applied to different products could still be deemed invalid, if the licensor mark is well-known or famous in Mexico. However, such invalidation would not be related to the invasion of earlier exclusivity rights, but to the unfair competition that the registration of a well-known or famous trademark could imply.

Nevertheless, the invalidation cause provided in paragraph V of section 151 of he Industrial Property Law provides one advantage in relation with the causes of invalidation stated in paragraphs II (earlier use) and IV (earlier Mexican registration). Such advantage is associated with the statute of limitations. A cancellation action on the grounds provided in paragraphs II and IV must be filed within a three and five years term, counted form the date of publication of the challenged trademark registration in the Industrial Property Gazette. On the other hand, a cancellation action on the grounds stated in paragraph V may be filed at any time.

In any case, although the invalidation cause stipulated in section 151, paragraph V, of the Industrial Property Law, may be filed only by owners of trademarks registered abroad when their licensees, distributors, agents or representatives obtain a Mexican trademark registration for said trademarks without their authorization, Mexican companies are nor banned from challenging the Mexican trademark registration on such grounds, provided that they own a foreign trademark registration.

Second consideration. Section 151, paragraph V, is against equal protection provided in Section 1 of the Mexican Constitution.

The second consideration is incorrect.

First, as explained above, the invalidation cause provided in section 151, paragraph V, of the Industrial Property Law, may be claimed by any owner of a foreign trademark registration, regardless if it is a Mexican company or a foreign company.

Second, the statute stipulates an identical treatment for all persons in the circumstances provided in paragraph V of section 151 of the Industrial Property Law.

For example, if the Industrial Property Law provided a different statute of limitations, depending on the nationality of owner of the foreign trademark registration, then it would be possible to argue that the stipulation is against the equal protection clause stated in the Constitution, but that is not the case.

Third Consideration. Mexico’s compliance with International Agreements.

First, no international treaty, State Constitution or federal or state law or statute is of equal rank than the Federal Constitution. They are all of lower rank than the Constitution.

For many years, the guideline provided in a binding precedent from the Supreme Court was that international treaties were of equal rank than the federal laws, but below the Constitution. In 1999, the Supreme Court rendered a new ruling, stating that federal treaties were of higher rank than federal laws, but always below the Constitution. This new ruling from the Supreme Court was confirmed in 2007, but is not binding yet.

From my perspective, the Mexican statutes provide the applicant or right-holder with reasonable procedures and formalities that are fair and equitable, as TRIPS and NAFTA demand, and I fail to see how the cause of invalidation stated in section 1512, paragraph V, of the Industrial Property Law, provided in the benefit of owners of foreign trademark registrations (both Mexicans and foreigners) may be deemed as unfair, unreasonable or inequitable. 

I believe that section 151 of the Industrial Property Law, including paragraph V, provides a reasonable opportunity to cancel a Mexican trademark registration, as stated in section 1708 of NAFTA, within reasonable time frames; the shortest term provided in the statute of limitations to file a cancellation action is three years, while there is no term to challenge a registration on the grounds provided in paragraph V.

Section 151, paragraph V, of the Industrial Property Law is not against the principle of national treatment stated in Article 3 of TRIPS and 1703 of NAFTA.

All entities and individuals, regardless their nationality, are entitled to seek the invalidation of a Mexican trademark, if they fulfill the requirements stated in said paragraph V, mainly owning a foreign trademark registration. As I stated above, if the plaintiff (Mexican or foreigner) holds a Mexican trademark registration, then a different cause of cancellation, provided in paragraph IV, would apply.

It is true that when there is discrepancy between a federal (or state) statue and an international treaty, the latter must prevail, and the court (or the MPTO) should apply the international treaty, if such treaty provides in the benefit of one of the parties a specific substantive right, claimable before a Mexican authority.

For example, the old Industrial Property Law of 1942 (in force until 1976) did not provide protection for service marks. However, the Supreme Court ruled that service marks could be registered and protected in Mexico, by applying the provisions stated in the Paris Convention*.

No Mexican court, not even the Supreme Court, may change a statute to adjust it to an international treaty. The Supreme Court and other federal courts may declare invalid a statutory provision, or a statute, but they can’t amend the law.

The amicus brief asks the FCTAA to interpret the Mexican Industrial Property Law in a manner according to the international treaties, namely, “that it does not limit the cancellation of trademark registrations obtained in bad faith to circumstances involving foreign trademark owners only”.

As I stated above, the statutory provision does not limit the cause if cancellation stated in section 151, paragraph V, to foreign trademark owners, but to owners of foreign trademark registrations, which is not the same.

On the other hand, neither NAFTA or TRIPS provide that the holder of a trademark registration is entitled to invalidate another trademark registration because the latter was filed by a licensee, distributor, representative or agent of such right holder, and the registration is presumed to have been obtained in bad faith; therefore, there is no substantive right stipulated in those international treaties that the FCTAA could apply in the benefit of one of the parties in the dispute.

If the lack of a statutory provision in Mexico, stipulating a cause of invalidation as the one stated above, were deemed to be against the obligation of Mexico of providing fair and equitable procedures, or stating a reasonable opportunity to cancel a Mexican trademark registration (a position I would not agree with), the courts cannot remedy such failure, at least not under the current Constitution.

It would be up to the Federal Congress to amend the statute and broad the current causes of invalidation of a trademark stated in the Industrial Property Law; meanwhile, the lack of compliance of Mexico of the international treaties would be a source of international liability.

It would be important to state that article 6 Septies of the Paris Convention provides the right to cancel a registration filed by an agent or representative without authorization of the trademark owner, no mater if such trademark owner had the mark registered in Mexico or in another country; the provision makes no reference to licensees, so it would be quite arguable if this cause of cancellation can be applied to licensees, as in the Grupo Anderson’s case.

Conclusion

Stating that the Mexican owner of a prior registration does not have the right, available to non-Mexican trademark owners, to challenge a later registration (for an identical or confusingly similar trademark) that was obtained in bad faith, as the amicus brief of INTA concludes, is wrong. The right is available for Mexicans and foreigners, provided that they own a foreign trademark registration and that the registration in Mexico was obtained by a licensee, distributor, representative or agent, without consent of the right-holder of said foreign trademark registration. This action is available besides the more general cancellation cause, on grounds of the existence of an earlier Mexican trademark registration for an identical or confusingly similar trademark, covering the same or similar services or products, regardless the good or bad faith of the applicant of the junior registration.

I agree that an amendment to the current section 151, paragraph V, of the Industrial Property Law, providing additional protection to holders of trademarks registered abroad and in Mexico against bad faith trademark registrations obtained by licensees, distributors, agents and representatives, would be desirable. However, current section 151 of the Industrial Property Law already allows all owners -Mexicans and foreigners- of a prior Mexican trademark registration or application (even earlier users of non-registered trademarks) to challenge a later registration that invades the previously acquired exclusivity rights.

* Binding rulings of the Second Chamber of the Supreme Court. Seventh Era, Second Chamber, Weekly Judicial Journal of the Federation, 72 Third Part, Pages 23 and 25.

La entrada The amicus brief filed by INTA with the Federal Court of Tax and Administrative Affairs (Grupo Anderson’s Case) se publicó primero en Reyes Fenig.