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.

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On April 3, 2012, the Secretaría de Gobernación or Ministry of the Interior submitted the text of the Madrid Protocol to the Mexican Senate for its review, discussion and approval. This legislature will have the last session in a few days, and the rumor is that the senators want to ratify this international treaty before the sessions period is over (Update May 14, 2012: On April 25, 2012, the Mexican Senate approved the accession of Mexico to Madrid Protocol).

Update July 18, 2012: In a private meeting with members of the Mexican Bar, the General Director of the Mexican Patent and Trademark Office clarified that although the Senate approved the accession of Mexico to the Madrid Protocol, the accession instrument has yet to be deposited with WIPO, and such deposit is not scheduled yet, so Mexico is not a party yet of the Madrid Protocol and we do not know when the treaty will enter into force with respect to Mexico.

Update December 23, 2012: On November 29, 2012 the Mexican government deposited the instrument of accesion at WIPO. Read Mexico joins the Madrid Protocol.

The position of the Mexican Chapter of the AIPPI, and of most of my colleagues, is of dismay. They have claimed for many years that Mexico should not join the Madrid Protocol because it does not benefit Mexican businesses and the treaty has serious technical deficiencies.

I do not know the Madrid Protocol well enough to discuss its technical deficiencies; what I know is that the people in Mexico that claimed that the Madrid Protocol is technical deficient did not produce a single paper demonstrating the alleged technical problems. Of course joining the Madrid Protocol will create problems in Mexico: we will have to adjust the Mexican legislation and procedures, create an opposition system and decide how the national trademark registrations will interact with the international registrations, but I do not see these issues as intrinsic deficiencies of the Madrid Protocol. If the Madrid Protocol was so technical deficient, we did a lousy job proving it.

Update July 18, 2012: In a private Seminar held in Mexico City on July 5, 2012, one of the highest rank officials of the Mexican Patent and Trademark Office stated that changes in the Mexican legislation and rules were not seen as essential before depositing the accession instrument with WIPO. Actually, it seems that the Mexican Patent and Trademark Office is not sure if there the law should be amended and how.

People, especially lawyers, do not like changes, and the Madrid Protocol will force us to change law and practices.

However, I do believe that Mexico should not access the Madrid Protocol because it does not seem in the best interest of Mexican businesses.

Although we live in a globalized world and Mexico is a very open economy, Mexican businesses “export” a relatively low number of trademarks. That can be explained because about 80% of our exports are bound to the United States. Therefore, if there is interest in protecting a trademark abroad, in most cases such interest is limited to the United States. On the other hand, Mexico’s policy does not actually intend to diversify the destiny if our exports. On the contrary, the idea is making Mexico more attractive for foreign investors as a way to gain access to the US market by developing local suppliers and taking advantage of the rules of origin provided in the North America Free Trade Agreement.

So, if the Madrid Protocol is not that good for Mexican companies, why would Mexico join? I think the actual reason why Mexico decided to take steps to access the Madrid Protocol is that the Mexican government is convinced that it will make our country more attractive to foreign investments. Although that may be true, I believe that stating that joining the Madrid Protocol will equally benefit Mexican and foreign businesses is very naive.

Update August 3, 2012: Periódico El Economista informed that the Mexican Minister of Economy revealed that the approval of the Madrid Protocol was because it was a condition set by the government of the United States to support the accesion of Mexico to the Trans-Pacific Partnership or TPP.

Update January 2015: Mexico started accepting international designations on February 2013. For a quick view of some practical problems of the Madrid System in Mexico, click here.

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Before the amendment, if an applicant wanted to claim priority, it had to state the application serial number of the claimed priority in the Mexican application and file a certified copy of the priority application with the Mexican Patent and Trademark Office (MPTO) within a three month term counted from the filing of the trademark application in Mexico in order to have the priority claim acknowledged.

Now, the applicant only has to state the priority application serial number in the Mexican application – and enter the government fee for the acknowledgement of a priority- to secure the priority right.

If the Mexican trademark application lists more products than the ones stated in the priority, the priority would be acknowledged only for the coincidental goods. If an applicant claims a non-existent priority and the MPTO issues a registration with such  a false claim, the trademark registration may be declared invalid.

The new simplified rule for priority trademark applications only benefits applications filed after June 11, 2011. This new rule should significantly reduce the cost of filing trademark applications with priority claim, given that the trademark agent will have one less deadline to worry about.

Regrettably, while the procedure for Mexican trademark applications is evolving to require fewer formalities, the patent application procedure has virtually remained the same since 1994.

For example, it is no longer necessary to file a power of attorney with the MPTO when filing a trademark application, but such formality has been maintained for patent applications. Now, the applicant does not have to file a certified copy of the priority application in the case of trademarks, but the formality persists for patents.

Further, the amended Rules expressly state that if the applicant files the priority document without translation, the applicant has a two months term to file the Spanish translations and the MPTO has not have to issue an office action requesting the translation; otherwise, the priority claim would not be acknowledged. However, the precedents from the Federal Court of Tax and Administrative Affairs state that it is illegal for the MPTO to refuse acknowledging a priority claim because the applicant did not file the Spanish translation of the document within the two months term, if the MPTO did not issue an office action requesting the translation ^1. .

The MPTO has not explained the reasons why the procedural rules and provisions regarding patents are not following the less formalistic trend of the trademark-related procedures. I do not see a technical reason, and I may only speculate that the people in charge of patents and the people in charge of trademarks believe that, rather than a Mexican Patent and Trademark Office, there is a Mexican Patent Office and a Mexican Trademark Office.

¹ Precedent “Patent. The Auhtority has the obligation to request the translation that was not filed with the patent application” – Page 463, Revista del Tribunal Federal de Justicia Fiscal y Administrativa or Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Volume 26, February 2010 (VI-TASR-EPI-222).

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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.

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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.

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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.

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Mexican law was already quite liberal, when compared with most Latin American countries, regarding the formal requirements for power of attorney documents for trademark and patent filing, prosecution and maintenance. Mexican law does not demand notarization, consular legalization or Apostille on such documents. Now, the law is going a little further

The MPTO will no longer request a power of attorney document in most trademark filing cases.

Instead, the MPTO will consider that the agent is authorized to file the trademark application on behalf of the applicant if the agent states under oath that it has such an authority. Of course, the MPTO will continue accepting the power of attorney document if the agent files it, but the examiners will no require it, and the lack of filing of the power of attorney would no longer delay the formal examination of the trademark application, the renewal application or an application to record an assignment or license.

Starting April 1st 2010, the new templates for trademark applications and renewal application will be mandatory; these new templates reflect the amendments to the law concerning the power of attorney.

It is a great thing that the trademark filing procedures in Mexico are becoming less formal. However, many Mexican lawyers and practitioners are worried about the consequences of such amendments in the long term, especially in connection to the validity and enforceability of trademark registrations issued without filing a power of attorney with the MPTO.

As I see it, the documentary evidence of the authority to file a trademark application or renew a registration on behalf of a third party –the applicant- is a different thing from the authority itself. Under the current amended statute, a trademark registration may not be invalidated due the lack of the filing of the power of attorney or due formal flaws in the document. However, a trademark registration or renewal could be invalidated due the absolute lack of authorization (verbal or written) to file the trademark or the renewal application. It may seem a very thin distinction, but technically speaking it is a huge difference.

It also seems that the MPTO will only consider the individual that actually signs the trademark or renewal application as attorney of record. If later, another professional from the same firm has any intervention in the prosecution of the application, the MPTO will not acknowledge him/her as attorney-of-record and will demand a written power of attorney, if it has not been filed, or payment of the government fee for the appointment of a new attorney of record. This will be an extremely delicate situation for firms that allow different professionals to intervene in the prosecution of trademark applications, and from my perspective, such a practice would be absolutely unfair and illegal.

Therefore, although no longer essential for the approval of the trademark application, I strongly recommend executing a written power of attorney and filing it with the MPTO at some point during the prosecution of the trademark application, or even after the issuance of the trademark registration or renewal, in order to secure evidence of the existence of the authority to do such filings.

Although less publicized, the amendments to the filing guidelines of the MPTO will introduce some changes in the practice of trademark filing and prosecution in Mexico. The most obvious change is that now there are mandatory templates for the most relevant filings with the MPTO; before the amendment, there were templates only for trademark and patent applications and for trademark renewal applications. Agents and lawyers prepared their petitions for all the other filings, in the way they better thought it suited the law and their needs. I would assume that the use of templates should help the MPTO to expedite the recordation of assignments, licenses and changes of name.

However, the MPTO is not only changing the guidelines; it is also changing some of its own practices, and not for good. An important change in the MPTO’s practice is that it will no longer allow applicants to request the issuance of certified copies of documents previously filed with the MPTO, at the same time that the applicant is fulfilling a certain requirement associated to a record or application different from the ones the documents were filed.

For example, let’s assume that there are two separate trademark applications for the same mark but in different classes, claiming the same priority from a multiple-class foreign application. In the past, one certified copy of the foreign trademark application was enough to have the priority rights acknowledged in both Mexican trademark applications. When requesting the MPTO to acknowledge the priority rights in one application, the applicant filed the original certified copy; in the other application, when requesting the acknowledgement of the priority, the applicant could ask the MPTO to issue a certified copy of the priority document just filed in the first application, in order to evidence the existence of the priority right.

Now, with the change in the practice of the MPTO, if there were two separate trademark applications for the same mark but in different classes claiming the same priority from a multiple-class foreign application, the applicant’s agent will have to obtain as many certified copies of the priority document as she/he may need, before requesting the acknowledgement of the priority rights, and file each request of acknowledgement of priority rights with its own priority document.

A similar situation will take place with the recordation of assignments, licenses, franchises, mergers, changes of name and securities, when they involve more than one trademark registration/application. Basically, the change of the MPTO’s practice will be reflected in an increase of the out-of-pocket expenses and in many cases it will jeopardize the timely filing of documents when there is a non-extendable deadline.

It is odd to see how, on one hand, the filing and prosecution of trademark applications are becoming less formal, and at the same time, the MPTO changes its practice to make the filing and prosecution of trademarks less expedite. It does not make any sense, and I believe it will be just a matter of time before some applicants start appealing the MPTO’s refusals to issue certified copies or to allow the intervention of more than one professional in the prosecution of a trademark application.

La entrada Amendments to the Mexican Industrial Property Statute make the trademark filings less formal, but also raise some concerns se publicó primero en Reyes Fenig.

The Mexican statutes do not stipulate any provision regarding trademark coexistence agreements and letters of consent. Nevertheless, these instruments have been widely used to prevent or overcome objections from the Mexican Patent and Trademark Office (MPTO) associated to applications for trademarks identical or confusingly similar to earlier registered or applied ones, protecting the same or similar products or services.

The Industrial Property Law provides that the MPTO will reject a trademark application when the trademark is identical or confusingly similar to an earlier registered or applied one, to cover the same or similar goods or services. Owners of existing registrations are allowed to apply for the registration of an identical trademark to protect goods/services similar to those covered by the senior registration.

The attitude of the MPTO to trademark coexistence agreements and letters of consent has changed, and in the last twenty four months it has been quite hostile. Now the question would be: if they are not regulated, do letters of consent and coexistence agreements actually work in Mexico?

In general, letters of consent and coexistence agreements have two basic purposes: (i) to overcome an objection raised by an examiner, associated to a senior trademark registration or application; and (ii) to prevent or settle a trademark dispute between two different persons.

In general, Mexican practitioners give more importance to the administrative aspect of the letter or agreement (as a mean to overcome an objection from the examiner) and often neglect the second contractual aspect, overlooking the rights and obligations arising from the letter of consent or coexistence agreement.

Consequences of letters of consent and coexistence agreements in connection with the MPTO

As I stated above, letters of consent and coexistence agreements are not regulated in Mexican law, thus they are not binding for the MPTO.

The Mexican Industrial Property Law states that one of the aims of the statute is “encouraging the improvement of the quality of goods and services in industry and commerce, according to the interest of the consumers”.

With the above in mind, the MPTO started arguing, about two years ago, that the protection of the consumers must have priority over the interests and wishes of the trademark owners. As a consequence, the approach of the MPTO to letters of consent and trademark coexistence agreements has been lees friendly than it used to be.

In an effort to provide some certainty about how effective a letter of consent might be to improve the chances of having a trademark registered in spite of the existence of earlier registered identical or confusingly similar trademarks, to cover the same or similar products or services, the MPTO developed a few guidelines. The guidelines are not actual directives, since they do not appear in any document or internal regulation, and have been communicated orally by the official in charge of the trademarks area of the MPTO in conferences with practitioners, so it also means that they may become more liberal or more astringent at any time and without notice.

Basically, the MPTO will accept a letter of consent or coexistence agreement to dismiss an anticipation, in the following cases:

(i) Similar trademarks covering the same or similar products or services, provided that the distinctive element of one of the trademarks is not identically reproduced in the other trademark; and

(ii) Identical trademarks covering similar products or services, provided that the goods or services listed in the pending application are not implicitly included in the list of products or activities of the senior trademark registration/application, or vice versa.

The MPTO will not accept a letter of consent or coexistence agreement in the following cases:

(a) Identical trademarks covering the same products or services. A word mark would be regarded identical to a word+design trademark if they share the same words.

(b) Confusingly similar trademarks that share the same distinctive element to cover, implicitly or explicitly, the same products or services.

This last guideline is causing problems to corporations that allow different subsidiaries or sister companies to register trademarks using the same house mark or distinctive feature for their specific lines of business, because the MPTO is rejecting such new applications, even when the applicant files a letter of authorization or agreement executed with the proprietor of the senior trademark registration †(see updates of January 2011 and April 2013).

In a case I found a few minutes ago while browsing in the on-line database of the MPTO, on February 20, 2009, the MPTO rejected the trademark application No. 919,139 “ILT ON SITE” filed by a Mexican corporation to cover “real estate affairs”, due the existence of the earlier trademark registration No. 982,020 “ILT”, also covering “real estate affairs”. The MPTO rejected the application in spite of the fact that the owner of the anticipation is a shareholder of the applicant and that he executed a letter of consent, stating that he authorized the registration of “ILT ON SITE” by his company.

Usually the MPTO does not issue an office action, informing the applicant that it will not accept the letter of consent or coexistence agreement, instead, it issues the final rejection of the trademark application. From there, the only remedies available for the applicant are filing a petition for administrative review by a higher rank officer within the MPTO itself (often a waste of time), or an amparo indirecto or constitutional appeal with a District Judge, or an appeal with the Tribunal Federal del Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA), which is the most usual way of challenging the MPTO’s decisions.

It is important to state that the non-specialized Chambers of the FCTAA have issued inconsistent decisions concerning the consequences of letters of consent and coexistence agreements; I have no information about any ruling from the specialized Chamber.

† Update of January 20, 2010: The Specialized Chamber in IP of the FCTAA published a precedent that rules that a letter of consent may not be enough to overcome an objection raised from the MPTO associated to the existence of a an earlier registered or applied confusingly similar trademark covering the same or similar goods**.

Although I am aware of the existence of rulings in different senses, the only two published precedents I found (non-binding) from two of the non-specialized Chambers of the FCTAA*, expressly state that the MPTO should reject an application for a trademark identical or confusingly similar to an earlier registered one for similar goods or services, even if the owner of the earlier registered trademark expressly authorizes the approval of the application.

Therefore, letters of consent and coexistence agreements may not guarantee that the MPTO will approve a trademark application; in the best scenario, they would only increase the chances of success, provided that they follow the current guidelines of the MPTO.

† Update January 26, 2011: The Semanario Judicial de la Federación or Weekly Judicial Journal of the Federation of October 2010 published a non-binding precedent of the Fourth Court of Appeals in Administrative Matters in the First Circuit (Mexico City)*** regarding trademark coexistence agreements and letters of consent.

The court stated that the consent of the owner of a registered trademark is enough to allow an entity of the same economic group to obtain the registration of an identical or confusingly similar trademark applied to the same of similar goods of services. Therefore, the MPTO must issue the trademark registration.

The court ruled that the fact that the first trademark owner and the applicant belong to the same economic group will avoid conflicts between the proprietors and would also prevent any harm to the consumers’ interests, in spite of the coexistence of identical or very similar trademarks owned by different persons. The precedent make no reference whatsoever to letters of consent and coexistence agreements between individuals or entities that do not belong to the same economic group.

Although the decision of the Fourth Court of Appeals is not binding, thus unlikely to provoke any change in the short term, it  is an important precedent. As far as I know, it is the first published decision from a court of appeals that makes reference to trademark coexistence agreements. Further, the ruling is against the decisions that the MPTO and the Specialized Chamber in Intellectual Property Matters of the FCTAA have issued regarding letters of consent and trademark coexistence agreements.

† Update April 25, 2013: The Semanario Judicial de la Federación or Weekly Journal of the Federation of December 2011 published a jurisprudencia or binding decision (2/2011) of the Second Hall of the Supreme Court to end a contradiction between rulings of two courts of appeals (one of them was the aforementioned ruling of the Fourth Court of Appeals)****. The Supreme Court ruled (contrary to what the Court of Appeals stated) that the MPTO must reject an application to register a trademark identical to a previously registered one to cover similar goods or services if the application is filed by an individual or entity different from the owner of the senior registration, regardless if the applicant belongs to the same economic group than the owner of the registration or if there has been a consent.

Consequences of letters of consent and coexistence agreements between the parties

When a letter of consent is executed by the trademark owner only, it is only an unilateral declaration, with no binding effects for the applicant. However, once the letter if filed with the MPTO, the applicant is implicitly accepting the terms of the letter, and then it becomes a contract under Mexican law.

Most letters of consent I have reviewed are more or less vague about the rights and obligations of the involved parties. In many cases, the letter only states that the trademark owner ‘authorizes’ the registration of the applicant’s trademark for certain goods or services or in a specific International Class.

A plain authorization granted by the trademark owner must imply at least some obligations for the authorizing party and some rights for the applicant; the problem is that these obligations and rights would be implicit, not explicit. From my perspective, the ‘authorization’ implies the obligation for the trademark owner to not oppose the application, but nothing more. If the letter or agreement only refers to an “authorization”, the earlier trademark owner would be allowed to file a cancellation action against the registration resulting from the so authorized application, claiming that it invades the exclusivity rights arising from the senior trademark registration, because the general Mexican statute that governs contracts, provides that the waiver of any right must be explicit; otherwise it is illegal and unenforceable.

The above is just an example about the importance that a trademark lawyer should give to the contractual aspect of the letter of consent or a coexistence agreement. Further, if the applicant is unsuccessful in obtaining the approval of the trademark application, in spite of the authorization letter or agreement, such letter or agreement could be the only instrument available for the applicant to defend itself in case it decides using the unregistered trademark and, on the other hand, the earlier trademark owner decides to file an infringement action. What I mean is that even if the letter of consent or coexistence agreement was not effective to obtain the trademark registration from the MPTO, the obligations and rights contained therein would still be valid and enforceable between the parties, thus it becomes extremely important that the letter of consent or coexistence agreement explicitly stipulates the rights of the parties and the waivers.

*Journal of the Federal Court of Tax and Administrative Affairs. Fifth Era, Year VII, Volume IV, No. 73, January 2007, Page 1927. Thesis: V-TASR-I-2346.

* Journal of the Federal Court of Tax and Administrative Affairs. Fifth Era, Year VII, Volume IV, No. 73, January 2007, Page 1929. Thesis V-TASR-II-2347.

** (Update January 2010) Journal of he Federal Court of  Tax and Administrative Affairs. Sixth Era, Year II, No. 22, October 2009, Page 292. Thesis VI-TASR-EPI-105.

*** (Update January 2011) Weekly Judicial Journal of the Federation, Ninth Era, Courts of Appeals, Vol. XXXII, October 2010, page 3119.

**** (Update April 2013) Weekly Judicial Journal of the Federation, Tenth Era, Second Hall, Vol. III, December 2011, No. 4, page 2887.

La entrada Are letters of consent and trademark coexistence agreements effective in Mexico? se publicó primero en Reyes Fenig.

The Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA) is a relatively new court. It was enacted in 2001, and its immediate predecessor was the Federal Tax Court. Most of the judges of the FCTAA are tax specialists. However, amendments to several statutes, particularly the modifications of April and May 2000 to the Federal Law of Administrative Procedures, broadened the scope of the old Federal Tax Court to decide a large number of administrative matters, (i.e. trademark registration, public officials liability, environmental protection, mining permits… etc.) until it became the FCTAA in December 2000. 

From mid 2000 to late 2008, appeals regarding IP matters were decided by on the thirteen non-specialized chambers of the FCTAA in Mexico City. Since January 2009, IP appeals are being decided by a specialized chamber, also located in Mexico City. 

The Federal Law of Contentious Administrative Procedures (FLCAP) rules the appeal procedure with the FCTAA. The immediate predecessor of the FLCAP was the contentious chapter of the Federal Tax Code, that governed the appeals with the now extinct Federal Tax Court. 

As you may see, a tax court and a tax law were the predecessors of the current specialized IP Chamber of the FCTAA and of the statute that govern the procedure for appeals involving IP. 

In a typical procedure concerning taxes, there are two parties with opposing interests: the State and the tax payer. The statute that governs the appeals in IP matters took this model. The problem is that in many IP matters, there may be more than one opposing party (such as the proprietor of a registered trademark that was cited as anticipation in a case involving the rejection of a trademark application, or the adversary in a patent invalidation or infringement action). 

At Law School, my Tax Law teacher told us that the purpose of Tax Law was defending tax payers, and many of the provisions (not all) stated in the Federal Tax Code, and later in the FLCAP reflect this way of thinking. Tax law tends to be very formalistic about the decisions and procedures to determine the existence of taxes and liabilities related to unpaid taxes. The lack of fulfillment of a formal or procedural requirement may result in the invalidation of the decision and the procedure, and all the Chambers of the FCTAA must review ex officio that the challenged decision complies with all formal requirements, regardless the arguments of the appellant. 

While such rigor may be desirable in a tax case, it may not be justifiable in a case where the decision of the Mexican Patent and Trademark Office (MPTO) was the result of a “trial-shaped” procedure or did not impose a fine but rejected a trademark or patent application. 

The FLCAP makes no distinction between decisions arising from a purely administrative procedure (such as the abandonment of a patent or the rejection of a trademark application) and decisions rendered as the result of an administrative procedure where the MPTO acted as a court to decide a dispute between two parties, such as a trademark or patent infringement case. 

Therefore, all the rigor that the FCTAA must use to review the compliance of formalities of a tax related decision, regardless the merits of the appeal, are being also applied to review all the decisions from the MPTO. 

The precedents 

A very important issue in Mexican administrative law, and especially in tax law, refers to the authority of the government agencies and the officials to decide taxes, administrative sanctions and impose fines. 

Historically, the government has exercised it power abusively. As a consequence, the Constitution and legislation have provided a number of requirements and limits to protect individuals and private entities from such abuses (whether such protections actually work or if they work only in the benefit of a privileged few would be subject of another discussion). 

One of the above-stated requirements is that the authority of any government agency to impose some burden or extinguishing some right of a private person must be expressly provided in an act of a federal o state legislature (Ley) or in a body of rules issued by the President or Governor himself (Reglamento). 

Certain bodies of rules, such as the estatutos orgánicos or “organizing regulations and the acuerdos delegatorios or “decisions to delegate authority” may provide a government agency with authority for certain actions, but in no case such authority may be broader than the one provided in the legislation or rules, and may not stipulate authority to impose burdens or limit or extinguish rights, if the legislation or the rules did not explicitly stated such authority. 

The requirement for all government officials to have explicit authority provided in the statute or in the rules to decide a case where the official imposes a burden or extinguishes or limits a right does not stop there. There is a binding precedent from the Supreme Court that demands that the official that decides a case must state all the statutes and rules that provide the authority to render the decision, including the article, section, paragraph, subparagraph, etc.** The FCTAA must review this issue ex-officio***, and if it finds one mistake, it must invalidate the decision due lack of authority of the issuing official, even if such lack of authority was never argued by any of the parties, or if it is irrelevant to decide the merits of the case. 

As I explained above, such rigor may be desirable in a tax case, because it has the clear intention of protecting the tax-payer against the abusive behavior of the executive branch. However, in a trademark infringement or cancellation case, this sort of ruling does not result in the enhanced protection of intellectual property rights. On the contrary, it seriously harms intellectual property owners and their activities; the delay of a final decision causes doubts and uncertainty about the enforceability and validity of IP rights, because the effect of the invalidation due apparent or actual lack of authority of the MPTO’s officials is the issuance a new decision signed by an official with authority to do so, or simply correcting the typing flaw that refers to the applicable provision of the statute that originates the authority of such official. 

Of course, given the some voids in the regulations that govern the activities of the MPTO’s officials, the new decision is not always free of formal flaws that may also cause, again, their invalidation, without ever looking at the merits of the appeal. 

Unfortunately, an IP case does not always stop at the FCTAA. The final instance is the Federal Court of Appeals. There are eleven non-specialized courts of appeals with jurisdiction to review the decisions rendered by the IP Specialized Chamber of the FCTAA. The courts of appeals issue contradictory rulings from time to time. When contradictory rulings arise, the Supreme Court may review the cases and decide what ruling should prevail; the Supreme Court’s decisions are binding for all the courts of appeals and the FCTAA. 

Finally, if the patent, trademark or copyright owner wants some indemnification related to a patent, trademark or copyright, the MPTO’s infringement decision must become final (after all the appeals), and then the right-holder may file an action with a court of common jurisdiction, which means to start all over again, but now to try to claim damages and lost of profits. 

The future 

One thing is clear: The current system does not work. Even a relatively simple case may take many years to be decided just because all the time wasted in irrelevant appeals. 

Some practitioners have suggested that the law should be amended to exclude IP from the scope of the FCTAA. Actually there is a bill that the Chamber of Representatives approved in late 2006 to exclude IP from the scope of the Federal Law of Administrative Procedures, and as a consequence, from the FCTAA. The bill is pending at the Senate. 

Although the lack of efficiency of the FCTAA is obvious, I am not sure that this is a good solution. District Courts may decide faster than the FCTAA, but the MPTO’s decisions tend to have many procedural and forma errors that may result in decisions from the District Judges just to cure formal and procedural flaws, with no actual benefit as for the time it takes to reach a final decision would be concerned. 

Finally, most District Judges have not been in regular contact with IP law since 2002, after the FCTAA took over the appeals for IP matters, so their decisions show in general less analysis of the case that the decisions of the FCTAA. 

From my perspective, Mexican IP law needs a structural change. The MPTO should not have authority any long to decide infringement and invalidation cases; such authority should be on specialized federal district courts, which may decide in the same decision if the trademark registration or patent is valid, if it has been infringed and award damages and/or attorney’s fees to the prevailing party.

 Of course, it is a complex issue and any solution would have to be more complex than what I just stated above. In any case, what all practitioners agree is that we need a change, and we have to start working on it now.

 * Ninth Era, Weekly Judicial Journal of the Federation, Courts of Appeals, XXIX, April, 2009, page: 1925, Thesis: I.7o.A.617 A, Registry 167451

 ** Ninth Era, Weekly Journal of the Federation, Supreme Court, Second Chamber, XXV, June 2007, page 287, Thesis: 2a./J. 99/2007

 *** Ninth Era, Weekly Journal of the Federation, Supreme Court, Second Chamber, XXVI, December 2007, page 154, Thesis: 2a./J. 218/2007

La entrada The basic structure of IP litigation in Mexico (Second part) se publicó primero en Reyes Fenig.

A very common complaint from IP owners is the extremely long time it takes to obtain a final decision in an IP infringement action or a patent invalidation or trademark cancellation case.

The purpose of this post is explaining the structure of IP litigation in Mexico, and of the appeals system in this field of law; why appeals have been taking so long in being decided; why they may take longer; why the courts appear to be so unreasonably formalistic about the authority of the officials of the Mexican Patent and Trademark Office that decide cases; and what can we expect in the close future.

In Mexico, most IP litigation involves administrative instances, such as the Mexican Patent and Trademark Office.

It is possible to file criminal charges in connection to trademark forgery and illegal reproduction of works protected by copyright, and file actions for damages with a civil court, and the Mexican Patent and Trademark Office would have little involvement, if any, in these sorts of procedures.

However, administrative cases involving infringement and invalidation of IP rights largely outnumber the matters currently handled by the General Attorney’s Office and the criminal and civil courts, thus this post with make only reference to the administrative litigation.

Having said the above, the basic structure of an IP litigation process is the following:

A. The first instance is the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO).

The MPTO not only issues patents and registers trademarks; it also has authority to decide infringement actions involving patents, trademarks and some cases of copyright, and the invalidation or cancellation of patents and trademarks.

An infringement or cancellation or invalidation action involves a full administrative trial, with the filing of a complaint, and answer, filing and review of evidence, final arguments and a decision.

The MPTO typically takes from 10 to 18 months to decide a trademark cancellation/infringement action. A patent infringement/invalidation action may take from one to three years, sometimes more, if the substantive matter of the patents is complex, as in the case of biotechnology.

The MPTO may not award damages or attorneys’ fees. It may only impose a fine of the infringer; order the preliminary and/or definitive seizure of infringing product issue a preliminary/definitive order to stop the manufacture and/or commercialization of infringing goods; or remove a trademark from the registry or invalidate the patent.

B. Appeals against the MPTO

There are three possible ways to challenge a final decision from the MPTO, no matter if the decision is the result of litigation or of a purely administrative procedure (final rejection of a trademark or patent application).

B1. Administrative Review. It is possible to file a petition for administrative review with a higher-rank official of the MPTO itself.

The filing of the petition for Administrative Review is optional. The appellant may choose not to file it and appeal the decision with the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA) –see B2- or file an Amparo claim (constitutional appeal) with a Federal District Court –see B3-.

The higher rank officials of the MPTO tend to confirm the decisions, unless there was a clear procedural or formal error.

Filing a petition for Administrative Review using substantive arguments against the decision is usually a waste of time, or an effective way to delay a final decision, given that the MPTO may take one year or more to simply confirm the earlier decision.

The decision issued in connection Administrative Review may be subject of an appeal with the FCTAA (see B2) or an amparo claim (see B3).

From a technical perspective, the appeal with the FCTAA and the amparo claim are completely different procedures in nature and structure, but in order to keep it simple, I will make emphasis only in practical issues.

B2. Appeal with the FCTAA. The appeal with the FCTAA is the most usual way to challenge the decisions of the MPTO. The appellant has 45 business days to file the appeal with the FCTAA.

The FCTAA is divided in salas or chambers of three judges each, and a Highest Chamber of eleven judges.

The FCTAA started reviewing appeals concerning IP in mid 2000, as a consequence of an amendment to the Federal Law of Administrative Procedures (FLAP). Since January 2009, appeals concerning IP matters are decided by a specialized chamber.

The FCTAA takes between one and two years to decide an appeal. The FCTAA has authority to order the MPTO to cure some formal or procedural flaw and render a new decision, or to decide on the merits of the case instead of the MPTO.

The general rule is that the parties are allowed to file new evidence and arguments, not previously submitted with the MPTO. However, there is a recent non-binding decision from the Seventh Court of Appeals in Mexico City, that intends to limit the filing of new evidence and arguments to prove the use of a trademark in appeals associated to cancellation actions due lack of use*.

B3. Amparo claim. The amparo claim involves a constitutional review of a final authority’s decision by a federal district judge to verify if there was a breach of a garantía individual or constitutional basic right.

One basic constitutional right in Mexico is that all decisions should be issued in accordance to the law. If the decision breaches the law, then it may also be unconstitutional.

As a general rule, the consequences of the amparo are limited to the invalidation of the authority’s decision, if found against the constitution, and the issuance of a new decision, which under certain circumstances, may be subject of a new amparo claim or an appeal with the FCTAA.

The amparo was the usual way to challenge decisions from the MPTO, until mid 2000, when the amendment to the FLAP gave the FCTAA authority to review appeals against the decisions o the MPTO, among other government agencies.

Notwithstanding the above, the amparo claim is still available to challenge most decisions of the MPTO, although practitioners do not use it, given the shorter time they would have to prepare the appeal. Further, the district judges tend to invalidate decisions only to order the MPTO to cure a formal or procedural flaw and render a new decision, instead of deciding the merits of the case. Finally, and from my very personal perspective, the FCTAA’s decisions usually show more careful analysis of the parties’ arguments than the decisions from the district judges.

Unlike the appeal with the FCTAA, the general rule is that the parties are not allowed to file new evidence or arguments.

The appellant has 15 business days to file the amparo claim, and the judge may take from 6 to 12 months to issue a decision.

C. Final appeals

As explained above, the decision issued by a higher rank official of the MPTO in connection to a petition for administrative review (see B1) may be challenged with the FCTAA or a federal district judge.

The decisions issued by the FCTAA and the district judge may be subject of a final appeal with a tribunal colegiado de circuito or federal court of appeals, or with the Mexican Supreme Court in some extraordinary cases, such as the direct interpretation of the Federal Constitution or the constitutionality of a statute or statutory provision.

The final appeal may be decided by any of the seventeen courts of appeals specialized in administrative matters located in Mexico City. A federal court of appeals takes about six to ten months to decide a final appeal. The Supreme Court may take a little longer.

In the second part of this post, I will explain some of the reasons why the appeals take so long to be decided, and why they may take longer.

* Ninth Era, Weekly Judicial Journal of the Federation, Courts of Appeals, XXIX, April, 2009, page: 1925, Thesis: I.7o.A.617 A, Registry 167451

La entrada The basic structure of IP litigation in Mexico (First part) se publicó primero en Reyes Fenig.