The burden also affects trademarks protected in Mexico according to the Madrid Arrangement, if the protection was issued on August 10, 2018, or after. The statement of actual and effective use must be filed directly with the Mexican Patent and Trademark Office (MPTO).

The window to file the statutory statement of actual and effective use, and a payment of about US$80.00, is three months counted from the third anniversary of issuance of the registration or protection in Mexico. The term may not be extended and the MPTO will not issue a reminder whatsoever.

Trademark owners (and their agents) must be careful with what they state. The declaration of use may be filed only if the trademark has been actually used in Mexico and it must provide only the goods or services the mark has been used on, and the trademark rights would be limited to the stated products or services.

Failure to timely file the statutory statement of use would result in the automatic lapsing of the trademark, slogan or trade name registration.

The window is small and the consequences of not filing the statement of use are dire. Trademark owners should double-check with their attorneys if they must file the statement of use and the term to do it.

La entrada The burden of stating the use of a trademark in Mexico is a reality se publicó primero en Reyes Fenig.

The lockdown started on March 24 and ended on July 12, 2020. All deadlines due between March 24 and July 12 were extended to July 13, 2020. Further, all terms calculated in days were suspended during the lockdown, and started running again on July 13.

Notwithstanding the above, the MPTO enabled a “buffer” period in the previous week (July 6 to July 10) to allow applicants to file all sorts of documents in paper at the window of the MPTO, and avoid unmanageable crowds on the first business day.

The MPTO was busy during the lockdown: It enabled new online systems to encourage e-filings, instead of the traditional paper filing at the window of the MPTO. According to the rules of the lockdown, documents and applications filed online and at the window in the “buffer” week during the lockdown, will have as official filing date July 13, 2020. In the case of new applications, since all of them will have July 13, 2020, as filing date, priority will be set according to the serial number of the new applications.

New Federal Law for the Protection of Industrial Property

The new Federal Law for the Protection of Industrial Property (FLIP) was published in the Official Journal of the Federation on July 1st, 2020. It will enter into force on November 5, 2020 and will substitute the current Industrial Property Law (old IPL) enacted in 1991. However the old IPL and the FLIP will coexist for some time.

The main purpose of the new legislation was incorporating the more recent commercial agreements Mexico has signed, especially the United States Mexico Canada Agreement (USMCA). Nevertheless, Mexican law states that a provision stated in an international treaty, such as the USMCA, may be applicable directly in favor of an individual or entity if it stipulates a specific right in benefit of such an individual or entity, even in the absence of local legislation.

The new law provides a more coherent and better structured legislation, not entirely free of some inconsistencies and voids.

FLIP also incorporates some practical guidelines already set by the examiners of the MPTO during the last years, giving applicants mores certainty in some fields of patent and trademark examination.

Pending of new Rules, the Rules of old the IPL will continue in force.

FLIP incorporates most of the 2018 amendments to the IPL. There are substantive changes in the fields of trademarks and industrial designs, but the most relevant changes are in patents and enforcement.

This article will mainly highlight the changes between the old IPL and the new FLIP, rather than making a comprehensive explanation about the new legislation. Future articles and updates will discuss specific issues in FLIP.

A. Inventions

A.1. Double patenting is now expressly forbidden (article 50 FLIP).

A.2. Explicit acknowledgement of patentability of microorganisms and biological material that has been isolated of its natural environment and obtained through a technical procedure (article 49 FLIP).

A.3. Inventions that may put people’s or animals’ life or health at risk, including inventions related to human cloning, human genetic material o the industrial or commercial use of human embryos, may not be patented (article 49 FLIP).

A.4. The Roche-Bolar defense is now part of the statute, without a time limit. A patent may not be enforced against a third party that uses, makes, offers in sale or imports a product claimed in a patent, only if such activities are aimed to generate tests, data and experimental production required to obtain a marketing authorization of a medicine for human health (article 57, paragraph II, FLIP). This defense was already stipulated in the Rules of Health Supplies.

A.5. Patents cannot be extended; the term is still 20 years counted from the filing date. However, the rights provided by a patent may be extended up for five years by means of a Supplementary Certificate, if there was an unreasonable delay in the grant of the patent (articles 126 to 136 FLIP).

A.6. Clearer and more comprehensive rules for divisional patent applications, especially voluntary divisional applications. The new law provides an extremely broad authority for the MPTO to decide if it accepts a divisional application from an already divided application (articles 100 and 102 FLIP).

A.7. Claims may not be constructed beyond the subject matter protected by the patent (article 55 FLIP).

A.8. The new term of utility models will be 15 years counted from the filing date, instead of 10 years (article 62 FLIP).

A.9. The causes to invalidate a patent have been limited to the cases expressly stated in the new statute. There is no statute of limitations to file an invalidation action against a patent (article 154 FLIP).

A.10. Detailed rules and procedure to request the limitation of the rights provided by a patent or correct mistakes (articles 121 a 125 FLIP).

A.11. Software is still not considered an invention, but in itself (article 47, paragraph V, FLIP).

A.12. FLIP provides a twelve-month grace period for inventions disclosed directly or indirectly by the inventor or the assignee and also by third parties that obtained the disclosed information from the inventor or the assignee. Such a disclosure would not affect the novelty of the invention.

B. Distinctive signs

B.1. The term of registered trademarks –including collective and certification marks-, registered slogans and tradenames, will be ten years counted from the date of registration or publication, instead of ten years from the filing date (articles 178, 204 and 211, FLIP).

B.2. Instead of a formal and substantive examination, there is now a single exam (article 225 FLIP).

B.3. The description of goods or services in a trademark application has to be determined and specific. We still do not know if multiple-class applications will be accepted; the Rules of FLIP will stipulate it (articles 176 FLIP and 57, paragraph I, of the Rules of the old IPL).

B.4. Oppositions. The consequences of filing oppositions are more serous now for all involved parties:

B.4.a. Unsuccessful oppositions will cause the opponent losing the right to file an invalidation action, using the same arguments and evidence, against the opposed trademark after its registration (article 259 FLIP).

B.4.b. The trademark applicant will have two months to answer the opposition and file all the evidence to support the right to the trademark. If the applicant does not answer the opposition, the trademark application will become abandoned (article 225 FLIP).

B.5. The MPTO may start ex officio an invalidation action against a trademark that identifies a product that, being subject of some regulation or specific legislation, breaks the applicable rules or provisions (article 178 FLIP). It is a new and odd provision, that stipulates losing trademark rights as a penalty due the infringement of laws or regulations not related whatsoever to the trademark.

B.6. Trademark coexistence agreements and letters of consent are still binding for the MPTO, but there are some changes. FLIP now provides that consent and coexistence agreements are acceptable for identical or confusingly similar trademarks to identify similar goods or services (article 123 FLIP). The consent is no longer valid to overcome the anticipation if the trademarks cover the same goods or services.

B.7. Declarations of actual and effective use. Trademark owners must file a declaration of actual and effective use after when renewing and after the third anniversary of issuance of the registration. The transitory articles of FLIP clarified that the burden of filing the declaration of use after the third year is due only for registrations issued on August 10, 2018, and thereafter. If the declaration of use were not filed when renewing, as it will happen with International Trademark Registrations issued according the Madrid Protocol, the MPTO will issue an office action requesting such a declaration within a two-month term (article 237 FLIP). These are very good news for Madrid trademark owners, although we do not know how the MPTO will notify such a request: (i) through a notice to WIPO; or (ii) through a notification in the Official Gazette.

B.8. FLIP now expressly provides that the goods or services described in trademark registrations shall be limited to the ones stated in the declarations of actual and effective use (articles 233 and 237 FLIP).

B.10. FLIP will allow partial cancellation and invalidation actions, so the invalidation or cancellation may affect only some of the goods or services listed in the registration (articles 258, paragraphs II and IV; 260, paragraph II, FLIP).

B.10. FLIP gave a blow to the date of first use, by stating that a trademark may be invalidated if the right holder does not prove that the date of first use stated in the trademark application is true (article 258, paragraph III, FLIP).

C. Appeals of Origin

C.1. FLIP regulates appeals of origin and geographical designations. However, FLIP defines the appeal or origin in a weird way: “a product linked to the geographical area it comes from, if its quality, characteristics or reputation are exclusively or essentially because the geographical origin of the raw materials and production process and the natural and human factors that influence the product”. FLIP should have defined the appeal of origin as a geographical name used to name a product originated from such area, not as a product. This change in the statute increases the differences between the Mexican legislation and rules about appeals of origin and the Lisbon Arrangement.

D. Contentious procedures

D.1. Now there is a limited list of causes that may lead to the invalidation of a Mexican patent. There is no general cause of invalidation of a patent and a patent may not be invalidated due procedural flaws during the examination of the application. (articles 154 y 258, paragraph I, FLIP).

D.2. FLIP now stipulates that the invalidation of a trademark registration has retroactive effects. And the cancellation due lack of use has consequences from the date the decision is issued. The invalidation of a patent also has retroactive effects, but such consequence was already provided in the old IPL. (article 159 and 263, FLIP).

D.3. FLIP now provides rules for a conciliatory procedure to try to settle infringement actions (articles 372 to 385, FLIP).

D.4. Manufacturing, offering in sale, transporting, storing, distributing, importing and exporting goods or services identified with a trademark or incorporating an utility model, industrial design or layout design (topography) is considered “use” of such trademark, utility model, industrial design or layout topography design and, if not authorized, a cause of infringement. It is no longer required proving that the infringer knew that the registered trademark, utility model, industrial design or layout topography design was illegally used. (Articles 386, paragraphs IX, X, XI, XIII, XVII and XXI, and 387, FLIP). These new provisions significantly increase the potential liability of retailers.

D.5. Offering in sale patented goods or goods that were obtained using  a patented process, without authorization, is an infringement, even if the infringer did not know about the patent rights (article 386, paragraphs VI and VIII, FLIP).

D.6. The MPTO has, under FLIP, authority to impose and collect fines, as a tax authority (articles 5°, paragraph VI, and 393, FLIP).

D.7. FLIP provides that he MPTO has authority to calculate and award damages and loses after issuing an infringement decision (article 396, paragraph I, FLIP).The MPTO may not award attorney’s fees. The MPTO’s decision awarding damages or loses has to be enforced by a court of common jurisdiction.

D.8. Under FLIP, the owner of a registered trademark or patent, and the licensee, may claim with a court of common jurisdiction damages and loses from due the illegal use of the trademark or patent, without a prior infringement decision from the MPTO (article 396, paragraph II, FLIP).

D.9. FLIP, and the old IPL, provides punitive damages and loses, and different ways to calculate it. Under FLIP, the minimum amount of the punitive damages would be the equivalent of the 40% of the “legitimate value index”. Different sources may be used to set the legitimate value index: the retail price of the legitimate goods, the profits that the rights holder lost, the profits earned by the infringer or the commercial value of a contractual license. (article 396, paragraphs I, II, III y IV, FLIP).

In any case, the plaintiff would have to prove it suffered an actual damage or loses and the consequential link between the infringement and such actual damages or loses.

D.10. The courts are authorized to enforce the preliminary measures provided in FLIP and the international treaties (article 408, paragraph I, FLIP).

D.11. The alleged infringer may ask the MPTO or the court to lift the preliminary measures by filing a counterbond but, under FLIP, the MPTO or the judge must evaluate the prima facie affected IP rights, the possible harm that the preliminary measures and the lifting of the preliminary measures may cause to the IP owner and the alleged infringer and the impact on public good before deciding. There is no “cap” for the amount of the counterbond, as in the old IPL (article 346 FLIP).

E. Contracts regulated by FLIP

E.1. Licenses. There is no need to record the license so the use of the trademark or patent is deemed as performed by the right holder (articles 138 and 240, FLIP), as stated in TMEC. No license recordal is required either to allow the licensee file infringement actions against third parties (unless the license expressly states otherwise). The law does not state either that the recordation of the license is necessary to the license becomes enforceable against third parties, such as good faith assignees.

E.2. Creditors and beneficiaries of securities and guarantees recorded with the MPTO are entitled to file the application for the renewal of the trademark registration without filing the declaration of actual and effective use. The law is silent about if creditors and beneficiaries of securities affecting patents, industrial designs, utility models and layout topography designs are entitled to pay maintenance annuities.

La entrada News from Mexico: the end of lockdown and a new patents and trademarks law se publicó primero en Reyes Fenig.

In this post I provide an updated list, until the end of 2018, of registered trademarks that have been acknowledged as well-known or famous in Mexico by the Mexican Patent and Trademark Office (MPTO) through the ad hoc procedure provided in article 98 Ter 1 (formerly 98 Bis 1) of the Industrial Property Law.

There are several ways a trademark may be acknowledged as well-known or famous in Mexico; the ad hoc procedure is not the only one. A trademark may be acknowledged as well-known or famous in the decision of a contentious procedure, such as an invalidation or infringement action at the MPTO. A trademark may also be acknowledged as famous or well-known in a trademark registration procedure, when the examiner states that the applied trademark may not be approved because it is identical or confusingly similar to a famous or well-known trademark, without a prior acknowledgement in a contentious or ad hoc procedure. For example, the trademark “AMEX” owned by American Express Marketing & Development Corp. was declared famous in Mexico when the examiner issued an office action in the trademark applications number 1,981,308 “AMEX” (& Design), 1,981,310 “AMEX” (& Design) and 1,981,311 “AMEX” (& Design)[1]. Actually, the trademark “AMERICAN EXPRESS” has been acknowledged as famous in Mexico through the ad hoc procedure.

The acknowledgment of a trademark as well-known or famous is a de facto recognition, not de iure. A well-known trademark today may not be well-known tomorrow. The acknowledgment of a trademark as well-known or famous does not provide exclusivity rights, but the holder may file legal actions to stop third parties from using identical or similar marks or invalidate other party’s trademark registrations. One of the advantages of the ad hoc acknowledgement is that it extends the recognition of a de facto situation by the trademark authorities over time, for at least five years, and may be updated (similar to a renewal) if the holder proves that the trademark continues being well-known or famous.

After reviewing the list of trademarks that have applied for the ad hoc acknowledgments, I noticed that famous has been preferred over well-known. Some holders of well-known trademarks have decided to refrain from updating the recognition and file for the acknowledgment as famous (i.e.: MOMIAS DE GUANAJUATO” and “RICOLINO”). By the end of 2018, there were only five well-known updates; on the other side, there were nineteen updates of recognitions of famous trademarks. This trend was already noticeable in 2013.

The famous trademarks are in a better position than well-known trademarks, especially after the 2018 amendments to the law: Article 90, paragraph XVII of the Industrial Property Law (as amended on May, 2018) prohibits the registration of trademarks identical or confusingly similar to marks that the MPTO considers famous for any product or service whatsoever. The prohibition is similar in the case of well-known trademarks, but there has to be the risk of unfair competition, harming the reputation of the well-known mark, dilution of the well-known mark or association of the applicant with the holder of the well-known trademark.

Further, article 213, paragraph VII, of the Industrial Property Law (as amended on May, 2018) states that using a mark identical or confusingly similar to a trademark considered by the MPTO as famous is an infringement, regardless the goods or services identified with the infringing mark.

A well-known or famous trademark continues being well-known or famous, even if the holder decides not updating the ad hoc acknowledgment. As I stated, the acknowledgment of a trademark as famous or well-known is the recognition of a de facto situation that may persist regardless any filing with trademark authorities. In the absence of the ad hoc acknowledgment, if the holder wants to claim that its mark is well-known or famous, it would have file all evidence required to prove it.

It is not clear if, in the case of an infringement action involving a trademark that has been acknowledged as famous or well-known through the ad hoc procedure, such acknowledgment would be enough evidence to prove such a status or if the holder should file additional evidence to prove that the mark is indeed well-known or famous.

The following is the list of trademarks acknowledged as well-known or famous by the MPTO through the ad hoc procedure published in the Official Gazette until the end of 2018. Of course, there are other trademarks acknowledged as famous or well-known out of the ad hoc procedure, so this is a non-limitative list.

1. Trademarks acknowledged as well-known through the ad hoc procedure:

A.1. Trademark: “ANDREA”

Trademark registration number: 572,692

Date of acknowledgment: November 4, 2008.

File number M.N. 2197/2007 (G-1) 18189

Owner: Fábricas de Calzado Andrea, S.A de C.V.

Gazette: May 2009

Status: Live (Updated. Gazette February 2016)

A.2. Trademark: “PRITT”

Trademark registration number: 154,268

Date of acknowledgment: June 30, 2010

File number: M.N. 638/2009 (T-4) 5766

Owner: Henkel AG & Co. KGAA

Gazette: June 2010

Status: Live (Updated. Gazette August 2016)

A.3. Trademark: “BARCEL”

Trademark registration number: 164,548

Date of acknowledgment: March 22, 2010

File number: M.N. 102/2009 (T-1) 1032

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: March 2010

Status: Expired

A.4. Trademark: “RICOLINO”

Trademark registration number: 255,612

Date of acknowledgment: April 5, 2010

File number: M.N. 104/2009 (T-2) 1037

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: April 2010

Status: Expired

A.5. Trademark: “RESISTOL”

Trademark registration number: 41,955

Date of acknowledgment: September 28, 2010

File number: M.N. 480/2009 (T-3) 4037

Owner: Henkel Capital, S.A. de C.V.

Gazette: September 2010

Status: Live (Updated. Gazette July 2016)

A.6. Trademark: “LAS MOMIAS DE GUANAJUATO”

Trademark registration number: 857,331

Date of acknowledgment: December. 7, 2010

File number: M.N. 785/2009 (T-5) 7179

Owner: Municipio de Guanajuato

Gazette: December 2010

Status: Expired

A.7. Trademark: “HOTELES CITY EXPRESS”

Trademark registration number: 780,478

Date of acknowledgment: December 21, 2010

File number: M.N. 1848/2009 (T-6) 15328

Owner: Hoteles City Express, S.A.B. de C.V

Gazette: December 2010

Status: Live (Updated. Gazette February 2017)

A.8. Trademark: “ADO”

Trademark registration number: 843,017

Date of acknowledgment: May 31, 2011

File number: M.N. 1429/2010 (T-2) 14091

Owner: Autobuses de Oriente ADO, S.A. de C.V.

Gazette: May 2011

Status: Expired

A.9. Trademark: “ELEKTRA”

Trademark registration number: 390,819

Date of acknowledgment: July 29, 2011

File number: M.N. 1355/2010 (T-1) 13639

Owner: Elektra Trading & Consulting Group, S.A. de C.V.

Gazette: July 2011

Status: Expired

A.10. Trademark: “SUPER PRECIO”

Trademark registration number: 650,945

Date of acknowledgment: November 18, 2011

File number: M.N. 1600/2011 (T-2) 14855

Owner: Tiendas Súper Precio S.A. de C.V.

Gazette: November 2011

Status: Expired

A.11. Trademark: “PAYASO”

Trademark registration number: 757,764

Date of acknowledgment: December 16, 2011

File number: M.N. 2148/2010 (T-3) 19884

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: December, 2011

Status: Live (Updated. Gazette September 2018)

A.12. Trademark: “CORONADO”

Trademark registration number: 887,611

Date of acknowledgment: February 9, 2012

File number: M.N. 2150/2010 (T-4)19900

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: February 2012

Status: Live (Updated. Gazette July 2018)

A.13. Trademark: “MELATE”

Trademark registration number: 932,323

Date of acknowledgment: October 31, 2012

File number: M.N. 2141/2011 (T-3) 19611

Owner: Pronósticos Para la Asistencia Pública

Gazette: October 2012

Status: Expired

A.14. Trademark: “ARENA MÉXICO”

Trademark registration number: 1,238,811

Date of acknowledgment: June 30, 2014

File number: M.N. 2440/2012 (T1) 22105

Owner: Nueva Arena México S.A. de C.V.

Gazette: June 2014

Status: Live a June de 2019

A.15. Trademark: “EKCO”

Trademark registration number: 51,806

Date of acknowledgment: July 29, 2014

File number: M,N. 1420/2013 (T-4) 14609

Owner: Grupo Vasconia S.A. de C.V.

Gazette: July 2014

Status: Live a July de 2019

A.16. Trademark: “VASCONIA”

Trademark registration number: 256,034

Date of acknowledgment: July 31, 2014

File number: M.N. 789/2013 (T-3) 8609

Owner: Grupo Vasconia S.A. de C.V.

Gazette: July 2014

Status: Live a July de 2019

A.17. Trademark: “ENSUEÑO”

Trademark registration number: 891,080

Date of acknowledgment: November 24, 2014

File number: M.N. 2350/2013 (T-6) 23478

Owner: Industrias Alen S.A. de C.V.

Gazette: November 2014

Status: Live

A.18. Trademark: “DINA”

Trademark registration number: 380,305

Date of acknowledgment: December 19, 2014

File number: M.N. 1618/2013 (T-5) 16571

Owner: Dina Camiones S.A. de C.V.

Gazette: December 2014

Status: Live

A.19. Trademark: “S MART” (& Design)

Trademark registration number: 1,409,909

Date of acknowledgment: March 31, 2015

File number: M.N. 672/2014 (T-2) 6386

Owner: S-Mart Mexicana, S.A. de C.V.

Gazette: March 2015

Status: Live

A.18. Trademark: “VERO”

Trademark registration number: 658,862

Date of acknowledgment: March 31, 2015

File number: M.N. 2617/2013 (T-7) 26053

Owner: Grupo Bimbo S.A.B. de C.V.

Gazette: March 2015

Status: Live

A.19. Trademark: “CAPRICE”

Trademark registration number: 354,077

Date of acknowledgment: April 30, 2015

File number: M.N. 839/2014 (T-3) 8395

Owner: CPIF Venture, Inc.

Gazette: April 2015

Status: Live

A.20. Trademark: “ELECTROLIT”

Trademark registration number: 461,398

Date of acknowledgment: May 27, 2015

File number: M.N. 1494/2014 (T-4) 15324

Owner: Laboratorios Pisa, S.A. de C.V.

Gazette: May 2015

Status: Live

A.21. Trademark: “TECATE TITANIUM”

Trademark registration number: 1,522,414

Date of acknowledgment: December 15, 2015

File number: M.N. 109/2015 (T-1) 869

Owner: Cervecería Cuauhtémoc Moctezuma, S.A. de C.V.

Gazette: December 2015

Status: Live

A.22. Trademark: “LEXUS”

Trademark registration number: 707,597

Date of acknowledgment: December 20, 2016

File number: M.N. 1861/2015 (T-3)16847

Owner: Toyota Jidosha Kabushiki Kaisha

Gazette: December 2016

Status: Live

A.23. Trademark: “MERCK”

Trademark registration number: 85,741

Date of acknowledgment: December 20, 2016

File number: M.N: 3344/2015 (T-4) 29581

Owner: Merck KGAA

Gazette: December 2016

Status: Live

A.24. Trademark: “WET LINE XTREME PROFESSIONAL X” (& Design)

Trademark registration number: 982,278

Date of acknowledgment: January, 31 2017

File number: M.N. 1393/2015 (T-2) 11408

Owner: Henkel AG & Co. KGAA

Gazette: January 2017

Status: Live

A.25. Trademark: “D`PORTENIS” (& Design)

Trademark registration number: 706,852

Date of acknowledgment: July 31, 2017

File number: M.N. 2008/2016 (T-2) 19837

Owner: Mas Diferente, S.A. de C.V.

Gazette: July 2017

Status: Live

A.26. Trademark: “NAVITEK”

Trademark registration number: 538,768

Date of acknowledgment: July 31, 2017

File number: M.N. 2149/2016 (T-3)21177

Owner: Navilux, S.A. de C.V.

Gazette: July 2017

Status: Live

A.27 Trademark: “SENOSIAIN”

Trademark registration number: 62,173

Date of acknowledgment: November 30, 2017

File number: M.N. 821/2017 (T-3) 9522

Owner: Alparis, S.A. de C.V.

Gazette: November 2017

Status: Live

A.28. Trademark: “TAJIN”

Trademark registration number: 320,328

Date of acknowledgment: May 31, 2018

File number: M.N. 2528/2016 (T-4) 24787

Owner: Golosinas de México, S.A. de C.V.

Gazette: May 2018

Status: Live

A.29. Trademark: “ANNTAYLOR” (& Design)

Trademark registration number: 1,831,474

Date of acknowledgment: September 14, 2018

File number: M.N. 225/2014 (T-1) 1758

Owner: Annco, Inc.

Gazette: September 2018

Status: Live

A.30. Trademark: “KOTEX” (& Design)

Trademark registration number: 20,937

Date of acknowledgment: November 28, 2018

File number: M.N. 544/2017 (T-2) 6847

Owner: Kimberly-Clark Worldwide, Inc.

Gazette: November 2018

Status: Live

A.31. Trademark: “ANCE” (& Design)

Trademark registration number: 1,761,532

Date of acknowledgment: December 7, 2018

File number: 1096/2018 (T-1) 11698

Owner: Asociación de Normalización y Certificación, A.C.

Gazette: December 2018

Status: Live

1. Trademarks acknowledged as famous through the ad hoc procedure:

B 1. Trademark: “CINÉPOLIS”

Trademark registration number: 1,039,899

Date of acknowledgment: November 20, 2009

File number: M.F. 1256/2008 (G-1) 10963

Owner: Cinemas de la República, S.A. de C.V.

Gazette: December 2009

Status: Live (Updated. Gazette January 2015)

B.2. Trademark: “INTEL”

Trademark registration number: 277,115

Date of acknowledgment: August 23, 2010

File number: M.F. 1577/2008 (G-2) 13777

Owner: Intel Corporation

Gazette: August 2010

Status: Live (Updated. Gazette May 2016)

B.3. Trademark: “RED BULL”

Trademark registration number: 848,424

Date of acknowledgment: February 19, 2010

File number: M.F. 2284/2008 (G-3) 18288

Owner: Red Bull GmbH

Gazette: February 2010

Status: Live (Updated. Gazette September 2015)

B.4. Trademark: “MARINELA”

Trademark registration number: 261,258

Date of acknowledgment: March 12, 2010

File number: M.F. 103/2009 (G-3) 1033

Propietario: Grupo Bimbo, S.A.B. de C.V.

Gazette: March 2010

Status: Live (Updated. Gazette October 2015)

B.5. Trademark: “GANSITO”

Trademark registration number: 95,836

Date of acknowledgment: March 12, 2010

File number: M.F. 101/2009 (G-2) 1031

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: March 2010

Status: Live (Updated. Gazette September 2015)

B.6. Trademark: “BIMBO”

Trademark registration number: 697,020

Date of acknowledgment: April 23, 2010

File number M.F. 100/2009 (G-1) 1030

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: April 2010

Status: Live (Updated. Gazette February 2016)

B.7. Trademark: “HARMON HALL” (& Design)

Trademark registration number: 707,108

Date of acknowledgment: September 3, 2010

File number: M.F. 1766/2009 (G-5) 14323

Owner: Harmon Hall Holding, S.A. de C.V.

Gazette: September 2010

Status: Live (Updated. Gazette June 2016)

B.8. Trademark: “BMW” (& Design)

Trademark registration number: 416,369

Date of acknowledgment: September 14, 2010

File number: M.F. 1782/2009 (G-6) 14483

Owner: Bayerische Motoren Werke Aktiengesellschaft

Status: Live (Updated. Gazette August 2016)

B.9. Trademark: “JOSE CUERVO”

Trademark registration number: 382,031

Date of acknowledgment: September 10, 2010

File number: M.F. 2107/2009 (G-9) 17586

Owner: Tequila Cuervo, S.A. de C.V.

Gazette: September 2010

Status: Live (Updated. Gazette June 2016)

B.10. Trademark: “MICROSOFT”

Trademark registration number: 283,589

Date of acknowledgment: November 10, 2010

File number: M.F. 500/2009 (G-4) 4556

Owner: Microsoft Corporation

Gazette: November 2010

Status: Expired

B.11. Trademark: “FLEXI” (& Design)

Trademark registration number: 674,758

Date of acknowledgment: December 7, 2010

File number: M.F. 1794/2009 (G-7) 14570

Owner: Grupo Flexi de León, S.A.P.I. de C.V.

Gazette: December 2010

Status: Expired

B.12. Trademark: “PEPSI”

Trademark registration number: 346,468

Date of acknowledgment: March 29, 2011

File number: M.F. 20175/2009 (G-8) 17296

Owner: Pepsico, Inc.

Gazette: March 2011

Status: Live (Updated. Gazette August 2017)

B.13. Trademark: “BARDAHL”

Trademark registration number: 865,925

Date of acknowledgment: April 15, 2011

File number: M.F. 734/2010 (G-1) 7654

Owner: Bardahl de México, S.A. de C.V.

Gazette: April 2011

Status: Live (Updated. Gazette March 2018)

B.14. Trademark: “PEMEX”

Trademark registration number: 522,165

Date of acknowledgment: May 27, 2011

File number: M.F. 2059/2010 (G-2) 19045

Owner: Petróleos Mexicanos

Gazette: May 2011

Status: Live (Updated. Gazette March 2017)

B.15. Trademark: INNOMINADA (Redbull charging bulls design)

Trademark registration number: 1,165,190

Date of acknowledgment: February 28, 2012

File number: M.F. 2170/2010 (G-4) 19984

Owner: Red Bull GMBH

Gazette: February 2012

Status: Live (Updated Gazette October 2018)

B.16. Trademark: “TAKIS”

Trademark registration number: 547,799

Date of acknowledgment: March 16, 2012

File number: M.F. 2151/2010 (G-3) 19901

Owner: Grupo Bimbo S.A.B de C.V.

Gazette: March 2012

Status: Expired

B.17. Trademark: “YAHOO”

Trademark registration number: 573,530

Date of acknowledgment: May 31, 2012

File number: M.F. 1151/2011 (T-1) 10840

Owner: Oath Inc.

Gazette: May 2012

Status: Live (Updated. Gazette December 2018)

B.18. Trademark: “COHIBA”

Trademark registration number: 306,470

Date of acknowledgment: July 20, 2012

File number: M.F. 2249/2011

Owner: Corporation Habanos, S.A.

Gazette: July 2012

Status: Expired

B.19. Trademark: “TELEVISA”

Trademark registration number: 858,155

Date of acknowledgment: August 31, 2012

File number: M.F. 2276/2011 (G-9) 20624

Owner: Mountrigi Management Group, LTD.

Gazette: August 2012

Status: Expired

B.20. Trademark: “SOY TOTALMENTE”

Trademark registration number: 645,851

Date of acknowledgment: September 28, 2012

File number: M.F. 2004/2011 (G-5) 18612

Owner: El Palacio de Hierro, S.A. de C.V.

Gazette: September 2012

Status: Live (Updated. Gazette November 2018)

B.21. Trademark: “EL PALACIO DE HIERRO” (& Design)

Trademark registration number: 997,244

Date of acknowledgment: September 28,2012

File number: M.F. 2005/2011 (G-6) 18613

Owner: El Palacio de Hierro, S.A. de C.V.

Gazette: September 2012

Status: Live (Updated. Gazette November 2018)

B.22. Trademark: “GANDHI”

Trademark registration number: 559,538

Date of acknowledgment: October 31, 2012

File number: M.F. 2076/2011 (G-7) 19072

Owner: Grupo 78. S.A. de C.V.

Gazette: October 2012

Status: Live (Updated. Gazette November 2018)

B.23. Trademark: INNOMINADA (Batman bat logo)

Trademark registration number: 376,283

Date of acknowledgment: November 30, 2012

File number: M.F. 1989/2011 (G-3) 184879

Owner: DC Comics

Gazette: November 2012

Status: Expired

B.24. Trademark: “BATMAN”

Trademark registration number: 371,343

Date of acknowledgment: November 30, 2012

File number: M.F. 1990/2011 (G-4) 18480

Owner: DC Comics

Gazette: November 2012

Status: Expired

B.25. Trademark: “SUPERMAN” (& Design)

Trademark registration number: 366,500

Date of acknowledgment: December 19, 2012

File number: M.F. 1987/2011 (G-1) 18475

Owner: DC Comics

Gazette: April 2015

Status: Expired

B.26. Trademark: “S” (& Design)

Trademark registration number: 580,446

Date of acknowledgment: January 31, 2013

File number: M.F. 1988/2011 (G-2) 18477

Owner: DC Comics

Gazette: January 2013

Status: Expired

B.27.Trademark: “NACIONAL MONTE DE PIEDAD”

Trademark registration number: 1,338,179

Date of acknowledgment: July 31, 2013

File number: M.F. 1544/2012(G-1) 13793

Owner: Nacional Monte de Piedad, I.A.P.

Gazette: July 2013

Status: Live (Updated. Gazette November 2018)

B.28. Trademark: “TIA ROSA”

Trademark registration number: 168,816

Date of acknowledgment: September 5, 2013

File number: M.F. 2444/2012 (G-3) 22119

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: September 2013

Status: Expired

29. 29. Trademark: “BUBULUBU”

Trademark registration number: 281,881

Date of acknowledgment: October 31, 2013

File number: M.F. 2476/2012 (G-4) 22289

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: October 2013

Status: Expired

B.30. Trademark: “EL CHAVO” (& Design)

Trademark registration number: 969,409

Date of acknowledgment: December 19, 2013

File number: M.F. 2031/2012(G-2) 18336

Owner: Roberto Gómez Fernández

Gazette December 2013

Status: Expired

B.31. Trademark: “CKLASS” (& Design)”

Trademark registration number: 880,569

Date of acknowledgment: January 29, 2014

File number: M.F. 49/2013 (G-1) 348

Owner: Wata Group, S.A. de C.V.

Gazette: January 2104

Status: Live a January de 2019

B.32. Trademark: “PINOL”

Trademark registration number: 472,540

Date of acknowledgment: March 31, 2014

File number: M.F. 1064/2013(G-2) 10856

Owner: Industrias Alen, S.A. de C.V.

Gazette: March 2014

Status: Live a March de 2019

B.33 Trademark: “LA COSTEÑA”

Trademark registration number: 375,684

Date of acknowledgment: April 15,2014

File number: M.F. 1609/2013(G-3) 16521

Owner: Conservas la Costeña, S.A. de C.V.

Gazette: April 2014

Status: Live a April de 2019

B.34. Trademark: “HELVEX”

Trademark registration number: 957,168

Date of acknowledgment: August 20, 2014

File number: M.F. 1691/2013(G-4) 17540

Owner: Helvex, S.A. DE C.V.

Gazette: August 2014

Status: Live a August de 2019

B.35. Trademark: “CLORALEX”

Trademark registration number: 367,713

Date of acknowledgment: September 15, 2014

File number: M.F. 2561/2013(G-5) 25449

Owner: Industrias Alen, S.A. DE C.V.

Gazette: September 2014

Status: Live

B.36. Trademark: “IPHONE”

Trademark registration number: 1,039,157

Date of acknowledgment: September 30, 2014

File number: M.F. 1273/2014 (G-4) 12770

Owner: Apple Inc.

Gazette: September 2014

Status: Live

B.37. Trademark: “ILUSIÓN”

Trademark registration number: 1,474,836

Date of acknowledgment: October 10, 2014

File number: M.N. 303/2013(T-2) 4429

Owner: Diltex, S.A. DE C.V.

Gazette: October 2014

Status: Live

B.38. Trademark: “HERDEZ”

Trademark registration number: 61,432

Date of acknowledgment: October 22, 2014

File number: M.F. 1665/2014 (G-5) 17004

Owner: Herdez, S.A. DE C.V.

Gazette: October 2014

Status: Live

B.39. Trademark: “TORTILLINAS”

Trademark registration number: 409,826

Date of acknowledgment: December 15, 2014

File number: M.F. 2615/2013 (G-6) 26049

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: December 2014

Status: Live

B.40. Trademark: “TRIDIMENSIONAL” (Takis design)

Trademark registration number: 1,172,732

Date of acknowledgment: December 19, 2014

File number: M.F. 2616/2013 (G-7) 26051

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: December 2014

Status: Live

B.41. Trademark: “OMNILIFE”

Trademark registration number: 556,402

Date of acknowledgment: February 27, 2015

File number: M.F. 949/2014 (G-3) 9814

Owner: Grupo Omnilife, S.A. de C.V

Gazette: February 2015

Status: Live

B.42. Trademark: “SICO”

Trademark registration number: 391,088

Date of acknowledgment: April 29,2015

File number: M.F. 270/2014 (G-1) 2375

Owner: Reckitt Benckiser México, S.A. de C.V.

Gazette: June 2015

Status: Live

B.43. Trademark: “LEGO” (& Design)

Trademark registration number: 443,052

Date of acknowledgment: June 30, 2015

File number: M.F. 419/2014 (G-2) 4009

Owner: Lego Juris A/S

Gazette: September 2015

Status: Live

B.43. Trademark: “BUFALO” (& Design)

Trademark registration number: 663,658

Date of acknowledgment: September 30, 2015

File number: M.F. 2559/2014 (G-8) 25562

Owner: Herdez, S.A. de C.V.

Gazette: September 2015

Status: Live

B.44. Trademark: “FIRESTONE”

Trademark registration number: 14,524

Date of acknowledgment: October 22, 2015

File number: M.F. 539/2015 (G-3) 4859

Owner: Bridgestone Licensing Services, Inc.

Gazette: October 2015

Status: Live

B.45. Trademark: “BRIDGESTONE”

Trademark registration number: 1,440,418

Date of acknowledgment: October 22, 2015

File number: M.F. 538/2015 (G-2) 4853

Owner: Bidgestone Corporation

Gazette: October 2015

Status: Live

B.46. Trademark: “EL CHAPULIN COLORADO”

Trademark registration number: 555,383

Date of acknowledgment: November 30, 2015

File number: M.F. 2201/2014 (G-6) 22873

Owner: Roberto Gómez Fernández

Gazette: November 2015

Status: Live

B.47. Trademark: “LG” (& Design)

Trademark registration number: 509,298

Date of acknowledgment: November 30, 2015

File number: M.F. 2456/2014 (G-7) 24867

Owner: LG Corp.

Gazette: November 2015

Status: Live

B.48. Trademark: “TECATE”

Trademark registration number: 134,004

Date of acknowledgment: December 15, 2015

File number: M.N. 123/2015 (G-1) 1073

Owner: Cervezas Cuauhtémoc Moctezuma, S.A. de C.V.

Gazette: December 2015

Status: Live

B.49. Trademark: “HARPIC”

Trademark registration number: 236,065

Date of acknowledgment: February 19,2016

File number: M.F. 782/2015 (G-5) 6460

Owner: Reckitt & Colman (Overseas) Limited

Gazette: February 2016

Status: Live

B.50. Trademark: “DOÑA MARIA”

Trademark registration number: 186,178

Date of acknowledgment: March 31, 2016

File number: M.F. 1962/2015(G-6) 17984

Owner: Herdez, S.A. de C.V.

Gazette: March 2016

Status: Live

B.51. Trademark: “BARCEL”

Trademark registration number: 164,548

Date of acknowledgment: April 29, 2016

File number: 563/2015 (G-4) 5056

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: April 2016

Status: Live

B.52. Trademark: “SIETE MACHOS”

Trademark registration number: 30,648

Date of acknowledgment: May 30, 2016

File number: M.F. 3321/2015 (G-11) 29540

Owner: Comercial Urania, S.A. de C.V.

Gazette: May 2016

Status: Live

B.53 Trademark: “RICOLINO”

Trademark registration number: 255,612

Date of acknowledgment: June 28, 2016

File number: M.F. 2074/2015 (G-7) 19463

Owner: Grupo Bimbo, S.A.B. de C.V.

Gazette: June 2016

Status: Live

B.54. Trademark: “DEL FUERTE”

Trademark registration number: 216,397

Date of acknowledgment: June 29, 2016

File number: M.F. 2357/2015 (G-9) 20992

Owner: Alimentos del Fuerte, S.A. de C.V.

Gazette: June 2016

Status: Live

B.55. Trademark: “BENOTTO”

Trademark registration number: 138,139

Date of acknowledgment: August 30, 2016

File number: 1240/2016 (G-6) 12339

Owner: Distribuidora de Bicicletas Benotto, S.A. de C.V.

Gazette: August 2016

Status: Live

B.56. Trademark: “IMSS SEGURIDAD Y SOLIDARIDAD SOCIAL” (& Design)

Trademark registration number: 550,086

Date of acknowledgment: September 13, 2016

File number: M.F. 413/2016 (G-1) 5379

Owner: Instituto Mexicano del Seguro Social

Gazette: September 2016

Status: Live

B.57. Trademark: “GAMESA”

Trademark registration number: 347,617

Date of acknowledgment: October 31,2016

File number: M.F. 3361/2015 (G-13) 29660

Owner: Corporativo Internacional Mexicano, S. de R.L. de C.V.

Gazette: October 2016

Status: Live

B.58. Trademark: “EMPERADOR”

Trademark registration number: 448,088

Date of acknowledgment: October 31, 2016

File number: M,F. 3371/2015 (G-13) 29689

Owner: Corporativo Internacional Mexicano, S. de R.L. de C.V.

Gazette: October 2016

Status: Live

B.59. Trademark: “SABRITAS”

Trademark registration number: 98,999

Date of acknowledgment: November 30,2016

File number: 3375/2015 (G-17) 29707

Owner: Pepsico, Inc.

Gazette: November 2016

Status: Live

B.60. Trademark: “ACTIVIA”

Trademark registration number: 658,926

Date of acknowledgment: November 30, 2016

File number: M.F. 930/2016 (G-3) 10003

Owner: Companie Gervais Danone

Gazette: November 2016

Status: Live

B.61. Trademark: “BEST DAY”

Trademark registration number: 1,115,026

Date of acknowledgment: January 31, 2017

File number: 3157/2015 (G-10) 28680

Owner: Viajes Beda, S.A. DE C.V.

Gazette: January 2017

Status: Live

B.62. Trademark: “SALADITAS”

Trademark registration number: 551,018

Date of acknowledgment: March 31, 2017

File number: M.F. 3367/2015 (G-14) 29676

Owner: Corporativo Internacional Mexicano, S. de R.L. de C.V.

Gazette: March 2017

Status: Live

B.63 Trademark: “VERDE VALLE”

Trademark registration number: 251,457

Date of acknowledgment: March 31, 2017

File number: M.F. 941/2016 (G-5) 10085

Owner: Productos Verde Valle, S.A. de C.V.

Gazette: March 2017

Status: Live

B.64. Trademark: “EXA”

Trademark registration number: 630,027

Date of acknowledgment: March 31, 2017

File number: 2964/2016 (G-10) 28889

Owner: Stereorey México, S.A.

Gazette: March 2017

Status: Live

B.65. Trademark: “VINCI”

Trademark registration number: 890,229

Date of acknowledgment: March 31, 2017

File number: M.F. 1447/2016 (G-8) 14704

Owner: Grupo Fila-Dixon, S.A. de C.V.

Gazette: March 2017

Status: Live

B.66. Trademark: “SCHICK”

Trademark registration number: 287,891

Date of acknowledgment: March 31, 2017

File number: M.F. 2189/2015 (G-8) 19956

Owner: Edgewell Personal Care Brands, LLC

Gazette: March 2017

Status: Live

B.67. Trademark: “OXXO” (& Design)

Trademark registration number: 453,234

Date of acknowledgment: April 18,2017

File number: M.F. 186/2017 (G-3) 1747

Owner: Grupo Industrial Emprex, S.A. de C.V.

Gazette: April 2017

Status: Live

B.68. Trademark: “SI VALE”

Trademark registration number: 593,922

Date of acknowledgment: April 28, 2017

File number: M.F. 940/2016 (G-4) 10075

Owner: Si Vale México, S.A. de C.V.

Gazette: April 2017

Status: Live

B.69. Trademark: “NISSAN”

Trademark registration number: 96,287

Date of acknowledgment: July 28, 2017

File number: M.F. 3365/2016 (G-12) 33551

Owner: Nissan Jidosha Kabushiki Kaisha

Gazette: July 2017

Status: Live

B.70. Trademark: “FLEXI”

Trademark registration number: 868,350

Date of acknowledgment: July 31,2017

File number: M.F. 489/2016 (G-2) 6130

Owner: Grupo Flexi de León, S.A.P.I. de C.V.

Gazette: July 2017

Status: Live

B.71. Trademark: “BARCELÓ”

Trademark registration number: 918,959

Date of acknowledgment: July 31, 2017

File number: M.F. 1261/2016 (G-7) 12839

Owner: Quiroocan, S.A. DE C.V.

Gazette: July 2017

Status: Live

B.72. Trademark: “ANDREA” (& Design)

Trademark registration number: 739,383

Date of acknowledgment: July 31, 2017

File number: M.F. 3304/2016 (G-11) 33128

Owner: Fábricas de Calzado Andrea, S.A. de C.V.

Gazette: July 2017

Status: Live

B.73. Trademark: “CORONA”

Trademark registration number: 841,746

Date of acknowledgment: August 31, 2017

File number: M.F. 3417/2016 (G-13) 33798

Owner: Cervecería Modelo de México, S. de R.L. de C.V.

Gazette: August 2017

Status: Live

B.74. Trademark: “PUEBLOS MÁGICOS”

Trademark registration number: 740,363

Date of acknowledgment: September 18, 2017

File number: M.F. 2273/2017 (G-12) 22931

Owner: Secretaría de Turismo

Gazette: September 2017

Status: Live

B.75. Trademark: “VOGUE”

Trademark registration number: 740,363

Date of acknowledgment: September 29, 2017

File number: M.N. 23/2017 (T-1) 231

Owner: Advance Magazine Publishers, Inc.

Gazette: September 2017

Status: Live

B.76. Trademark: “NIKE”

Trademark registration number:  252,062

Date of acknowledgment: February 28, 2018

File number: M.F. 913/2017 (G-6) 11030

Owner: Nike Innovate C.V.

Gazette: February 2018

Status: Live

B.77. Trademark: “INNOMINADA” (Nike’s checkmark logo)

Trademark registration number: 797,100

Date of acknowledgment: February 28, 2018

File number: M.F. 914/2017 (G-7) 11033

Owner: Nike Innovate C.V.

Gazette: February 2018

Status: Live

B.78. Trademark: “LAS MOMIAS DE GUANAJUATO”

Trademark registration number: 1,634,161

Date of acknowledgment: March 20, 2018

File number: M.F. 279/2017 (G-4) 3401

Owner: Municipio de Guanajuato

Gazette: March 2018

Status: Live

B.79. Trademark: “SUAVITEL”

Trademark registration number: 415,924

Date of acknowledgment: April 27, 2018

File number: M.F. 2707/2016 (G-9) 27373

Owner: CPIF Venture, Inc.

Gazette: April 2018

Status: Live

B.80. Trademark: “COFLEX”

Trademark registration number: 836,301

Date of acknowledgment: April 30, 2018

File number: M.F. 509/2017 (G-5) 6252

Owner: Coflex, S.A. de C.V.

Gazette: April 2018

Status: Live

B.81. Trademark: “MERCK”

Trademark registration number: 85,741

Date of acknowledgment: April 30, 2018

File number: M.F. 1823/2017 (G-10) 19853

Owner: Merck KGAA

Gazette: April 2018

Status: Live

B.81. Trademark: “KIDZANIA”

Trademark registration number: 810,047

Date of acknowledgment: April 30, 2018

File number: M.F. 291/2018 (G-2) 2544

Owner: Kidzania, S.A.P.I. de C.V.

Gazette: April 2018

Status: Live

B.82. Trademark: “THE HOME DEPOT”

Trademark registration number: 382,465

Date of acknowledgment: May 29, 2018

File number: M.F. 2136/2017(G-11) 22554

Owner: Home Depot International, Inc.

Gazette: May 2018

Status: Live

B.83. Trademark: “BONAFONT”

Trademark registration number: 420,754

Date of acknowledgment: May 31, 2018

File number: M.F. 2680/2017 (G-15) 27444

Owner: Bonafont, S.A. de C.V.

Gazette: May 2018

Status: Live

B.84. Trademark: “BODEGA AURRERA”

Trademark registration number: 1,174,787

Date of acknowledgment: May 31, 2018

File number: M.F. 3278/2017 (G-17) 33470

Owner: Wal-Mart de México, S.A.B. de C.V.

Gazette: May 2018

Status: Live

B.85. Trademark: “AXA”

Trademark registration number: 1,740,983

Date of acknowledgment: June 28, 2018

File number: M.F. 3232/2017 (G-16) 32897

Owner: Axa

Gazette: June 2018

Status: Live

B.86. Trademark: “NUTRISA”

Trademark registration number: 817,447

Date of acknowledgment: June 29, 2018

File number: M.F. 1522/2017 (G-9) 17197

Owner: Nutrisa, S.A de C.V.

Gazette: June 2018

Status: Live

B.87. Trademark: “LALA” (& Design)

Trademark registration number: 1,522,214

Date of acknowledgment: July 23, 2018

File number: M.F. 478/2018 (G-3) 5740

Owner: Comercializadora de Lácteos y Derivaos S.A. de C.V.

Gazette: July 2018

Status: Live

B.88. Trademark: “ZARA”

Trademark registration number: 400,136

Date of acknowledgment: September 27, 2018

File number: M.F. 133/2018 (G-1) 599

Owner: Industrial de Diseño Textil, S.A. (Inditex S.A.)

Gazette: September 2018

Status: Live

B.89. Trademark: “CAGUAMA”

Trademark registration number: 570,851

Date of acknowledgment: October 29, 2018

File number: M.F. 1922/2018 (G-14) 21171

Owner: Cervezas Cuauhtémoc Moctezuma, S.A. de C.V.

Gazette: October 2018

Status: Live

B.90. Trademark: “SONORA GRILL”

Trademark registration number: 1,933,263

Date of acknowledgment: October 30, 2018

File number: M.F. 1990/2018 (G-16) 22204

Owner: Ricardo Añorve Martinez

Gazette: October 2018

Status: Live

B.91. Trademark: “AMERICAN EXPRESS”

Trademark registration number: 199,952

Date of acknowledgment: October 31, 2018

File number: M.F. 2632/2017 (G-14) 26842

Owner: American Express Marketing & Development Corp.

Gazette: October 2018

Status: Live

B.92. Trademark: “ANDATTI”

Trademark registration number: 1,917,496

Date of acknowledgment: November 29, 2018

File number: M.F. 2170/2018 (G-17) 23685

Owner: Grupo Industrial Emprex, S.A. de C.V.

Gazette: November 2018

Status: Live

B.93. Trademark: “M” (& Design) (Monster logo)

Trademark registration number: 942,216

Date of acknowledgment: November 29, 2018

File number: M.F. 807/2018 (G-5) 8365

Owner: Monster Energy Company

Gazette: November 2018

Status: Live

B.94. Trademark: “MONSTER”

Trademark registration number: 766,635

Date of acknowledgment: November 29, 2018

File number: M.F. 666/2018 (G-4) 7220

Owner: Monster Energy Company

Gazette: November 2018

Status: Live

B.95. Trademark: “PHOTOSHOP”

Trademark registration number: 670,716

Date of acknowledgment: November 30, 2018

File number: M.F. 1200/2017 (G-8) 13779

Owner: Adobe System Incorporated

Gazette: November 2018

Status: Live

B.96. Trademark: “MASSIMO DUTTI”

Trademark registration number: 627,417

Date of acknowledgment: December 17, 2018

File number: M.F. 1144/2018 (G-6) 12420

Owner: Grupo Massimo Dutti, S.A.

Gazette: August 2009

Status: Live

B.97. Trademark: “ELD ESCUELA LIBRE DE DERECHO” (& Design)

Trademark registration number: 711,239

Date of acknowledgment: December 19, 2018

File number: 1964/2018 (G-15) 21884

Owner: Escuela Libre de Derecho

Gazette: November 2011

Status: Live

B.98. Trademark: “PARAMETRÍA DE FRANCISCO ABUNDIS

Trademark registration number: 1,858,409

Date of acknowledgment: December 19, 2018

File number: M.F. 1887/2018 (G-12) 20974

Owner: Parametría S.A de C.V.

Gazette: December 2018

Status: Live

[1] The applicant did not answer the office actions and the applications were abandoned.

La entrada Trademarks acknowledged as well-known and famous in Mexico as to 2018 se publicó primero en Reyes Fenig.

Mexico joined the Madrid Protocol on November, 2012, and started accepting international registrations on February, 2013 (read our article about the accession of Mexico to the Madrid Protocol).

The Madrid Protocol is not perfect and applicants may find problems with the simultaneous examination of trademarks in different countries but, in general, I think it has proven to be a successful tool for international businesses.

Some countries’ legislation may provide specific burdens on right-holders of domestic and international registrations, forcing them to prepare additional filings to maintain the trademark rights in those countries.

The new Federal Law for the Protection of Industrial Property entered in force on November 5, 2020. It provides the filing of a declaration of actual and effective use. Such a declaration was added to the Mexican legislation since May, 2018.

The burden of filing the declaration of actual and effective use will impact, sooner or later, all trademark owners in Mexico, including owners of Madrid international trademark registrations.

The declaration of actual and effective use is due on two different moments:

1) Declaration of use after three years of registration.

The owners of trademark registrations issued on August 10, 2018, and thereafter, must file a declaration of actual and effective use, after the third anniversary of issuance of the registration. In the case of Madrid applicants, the filing is due after the third anniversary of granting of protection in Mexico (read our post about the new declaration of use).

The statutory term to file the declaration of use is very short: three months only, counted from the date the trademark registration (or the granting of protection of the international trademark registration in Mexico) becomes three years old.

One declaration is due per domestic registration. In the case of Madrid international trademark registrations, if the protection in Mexico was granted in more than one Class, one declaration of use is due in each Class; the Mexican Patent and Trademark Office (MPTO) assigns one separate Mexican registration number for each Class of products or services comprised in the International Registration. Further, each declaration of use has to be filed electronically or at the window of the MPTO by a local attorney authorized with a power of attorney. A government fee (about US$85.00) has to be paid with each declaration of use.

Failure to file the declaration of actual and effective use would result in the cancellation of the Mexican trademark registration or international registration, in full or in the Class where the declaration of use was not filed.

Furthermore, the protection in Mexico of the international registration shall be maintained only for the goods or services stated in the declaration(s) of actual and effective use.

2) Declaration of use when renewing.

A declaration of actual and effective use is required for all domestic trademark renewal applications filed on or after August 10, 2018.

In the case of Madrid International Trademark Registrations, a declaration of actual and effective use is due if filed on or after August 10, 2018. Given that it would be very difficult to file the declaration of use and the fee when filing the renewal with the World Intellectual Property Organization (WIPO), the MPTO will issue an office action, requesting the declaration of use and the fee[1]. We do not know if the MPTO will serve the office action through WIPO or if it will notify it through the Official Gazette.

One declaration of use per Class involved in the International Registration is due, and it has to be filed electronically or at the window of the MPTO by a local attorney. A government fee (about US$85.00) must be paid with each declaration of use, regardless any fee paid at WIPO with the renewal application.

The protection in Mexico shall be maintained only for the goods and/or services stated in the declaration(s) of actual and effective use.

[1] Under the old Industrial Property Law, the owner of the International Registration had three months to file the declaration of use, counted from the date WIPO notified the renewal, with no requierement from the MPTO. The notices that WIPO received from the MPTO explaining these, back then, new burden, may be reviewed here and here.

La entrada Madrid users, be warned: Renewing the International Registration is not enough in Mexico (Update 2020) se publicó primero en Reyes Fenig.

As I reported in an earlier post (see Mexico starts a new era in Trademark Law (the amendments of May, 2018)), last May 18, 2018, the Official Journal of the Federation published important amendments to the Mexican Industrial Property Law, particularly in the field of trademarks. The amendments became in force on August 10, 2018.

In general, the changes had a favorable reception. However, some amendments were not welcome. One of the changes, that I did not like, refers to the reintroduction of the burden of filing a declaration of actual and effective use of the trademark after the third anniversary of issuance of the registration, in order to keep it alive.

As background, the Trademarks and Inventions Statute of 1976 stated that trademark owners had to file a statement and evidence of use after the third year of registration, and again when renewing. This burden was deleted in the 1991 Industrial Property Law (See Is it neccesary to file evidence of use of a trademark in Mexico to keep it alive?). Now, almost 27 years later, it reappears.

The amended articles 128 and 152, paragraph III, of the Industrial Property Law, provide that the owner of a trademark registration must file a statement of actual and effective use of the trademark after three years of registration. The window to file the statement is three months, counted from the date of the third anniversary of issuance of the registration. Failure to file the statement of actual and effective use of the registered trademark would result in the ipso iure abandonment of the registration.

If the trademark registration lists goods or services different from the ones that have been actually identified with the trademark in Mexico, the declaration of use may not be filed and the registration will become abandoned too.

The burden to file the statement of actual and effective use affects owners of nationally filed trademark registrations and owners of Madrid International Registrations, if the registration or declaration of protection in Mexico were issued on August 10, 2018, and thereafter.

(Update March 7, 2019: The declaration of actual and effective use is also due when renewing the local trademark registration or the international trademark registration. Read more here.)

(Update March 14, 2019: Applicants must be careful when filing the declaration of actual and effective use, either at the third year of registration or when renewing; the coverage of the trademark registration shall be limited to the goods or services stated in the declaration of use, although it is questionable whether such a limitation is legal.)

The reasons behind the new burden to file a statement of actual and effective use are unclear, but the Mexican Patent and Trademark Office will charge a government fee of about US$75.00 for each declaration of use filed.

Although it is evident that the new burden will apply to Mexican trademark registrations issued on August 10, 2018, and thereafter, there are concerns about the possible ex post facto enforcement of the amended stipulations to trademark registrations issued before August 10, 2018, especially the ones issued after August 10, 2015. Some lawyers say that amended articles 128 and 152, paragraph III of the Industrial Property Law may be applied ex post facto, thus if trademark owners of registrations issued after August 10, 2015, do not file the statement of actual and effective use, the registration will become abandoned. Of course, these lawyers are sending communications advising owners of registered trademarks issued between August 10, 2015, and August 10, 2018, to file the statement of use.

In my opinion, there are no grounds to claim that amended articles 128 and 152, paragraph III, of the Industrial Property Law may be enforced ex post facto.

Article 14 of the Constitution states, as a rule, that no law shall be enforced ex post facto. There are two exceptions:

1. If the new law expressly provides that it shall be enforced ex post facto, as some precedents explain[1]. If such an ex post facto enforcement of the law harms an acquired right (opposed to a potential right), it may be declared unconstitutional. If it benefits the recipient of the law, then it would be a valid ex post facto enforcement.

In the case of amended articles 128 and 152, paragraph III, of the Industrial Property Law, there is no stipulation in the amended statute or transitory provisions, allowing the ex post facto enforcement of any of the amended articles. Therefore, no amended provisions, especially the ones regarding the burden to file a declaration of use, may be applied ex post facto to trademark and slogan registrations issued before August 10, 2018.

2. The second exception that allows the ex post facto application of a law is that the amended provisions improve the general civil rights of a person, or benefits a person subject to a punitive criminal, tax or administrative procedure. Only in these cases, an amended provision may be enforced ex post facto even if the law does not expressly authorized such an application.

Enacting a statutory provision stating a new burden to trademark owners to keep the registration alive, with nothing in return, is not a benefit and does not improve anything for rights holders, so I fail to see how amended articles 128 and 152, paragraph III, of the Industrial Property Law may be automatically enforced ex post facto.

Finally, Transitory Article Two of the amended provisions states that trademark applications and oppositions filed before the amendments became enforceable (August 10, 2018), shall be prosecuted and decided according to the statutory provisions in force when the application was filed.

The above is actually a relevant provision, even if it is unrelated to the burden of filing a statement of actual and effective use of the registered trademark. Unlike substantive rights, parties in a procedure do not have acquired rights for future actions and terms within the procedure; amendments to procedural laws cause that the amended provisions become applicable to ongoing examinations, unless otherwise stipulated in the statute. Without Transitory Article Two, ongoing trademark and slogan application procedures would have continued under the new amended procedural rules, and that could have been messy. Transitory Article Two allows the MPTO to continue the examination of applications filed before August 10, 2018, under the old rules.

In summary, I believe that there is no reason to state that the filing of a statement of actual and effective use of a Mexican registered trademark, when it becomes three years old, is compulsory for trademark registrations issued before August 10, 2018, in order to avoid the ipso iure abandonment. However, the statement of actual and effective use (and the government fee associated with such a statement) will have to be filed simultaneously with the renewal, regardless if the registration was issued before or after August 10, 2018.

I think that the reason why some colleagues are advising clients to file statements of use, in spite that their trademarks were issued before August 1, 2018, is that many lawyers do not fully understand what the ex post facto application of the law is and how it works.

[1] “RETROACTIVIDAD DE LA LEY”, at Semanario Judicial de la Federación, Quinta Época, Tomo VI, page 726; “RETROACTIVIDAD DE LA LEY (TEORÍA DE LOS DERECHOS ADQUIRIDOS) (LEGISLACIONES DEL DISTRITO FEDERAL Y DE YUCATÁN)”, at Semanario Judicial de la Federación, Quinta Época, Tomo LXXVIII, page 2435; “RETROACTIVIDAD. CUANDO ES JURIDICA LA APLICACION RETROACTIVA DE LA LEY”, at Semanario Judicial de la Federación, Quinta Época, Tomo CXXXII, page 304.

La entrada The new statement of use of registered trademarks in Mexico se publicó primero en Reyes Fenig.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Diario oficial 18-may-18 (marcas)

La entrada Mexico starts a new era in Trademark Law (the amendments of May, 2018) se publicó primero en Reyes Fenig.

Sportflix claimed to be a Mexican Internet platform that, by means of a subscription, offers streaming services of sport events broadcasted by companies such as ESPN, Foxsports, Televisa and TV Azteca, among others. Actually, Mexican press often identified Sportflix as the “Netflix of sports”[3]. When questioned about licenses and authorizations to stream other’s transmissions, the alleged VicePresident of Sportflix said that their activities would not harm the exclusivity rights of the broadcasters because Sportflix is a streaming service, not a TV broadcaster[4].

Sportflix.net was scheduled to start streaming on August 30, 2017, but no content seems available yet. The site states that it still welcomes subscribers.

The WHOIS information available on September 28, 2017, states that sportflix.net belongs to someone identified as “Ninja Mortal” (I guess translation is not necessary) addresses at Patzcuaro, state of Guerrero, Mexico[5] (Patzcuaro is actually at the state of Michoacán, not Guerrero). SPORTFLIX is a registered Trademark in Mexico for services in International Classes 38 and 41, with registration numbers 1,758,031, 1758,032, 1,758,033 y 1,745,868 (issued in 2016) in the name of Matías Jacobo Said.

The press release of the MPTO states that there are, at least, two infringement actions: one related to trademark infringement and probably unfair competition; and the other associated to copyright infringement (the MPTO has jurisdiction on copyright infringement cases when related with trade). The MPTO did not explain exactly what causes of infringement were involved in the infringement actions against the streaming platform. The MPTO also enforced preliminary measures on the person/entity in charge of sportflix.net.

Although the MPTO did not identified the copyrights that sportflix.net was allegedly infringing, it stated that the infringement actions involved the defense of Mexican trademark registrations numbers 689,527 TELEVISA & Design, 1,637,894 TELEVISA & Design (both owned by Mountrigi Management Group Ltd.), 568,659 TV AZTECA & Design (in the name of TV Azteca, S.A. de C.V.), 606,147 FOX SPORTS & Design, 606,148 FOX SPORTS & Design (both owned by Twentieth Century Fox Film Corporation), 532,938 ESPN (in the name of ESPN Inc.), 802,767 TNT & Design (owned by Turner Network Television, Inc.) and 413,704 UNIVISION & Design (in the name of Univision Communications Inc.).

I am sure the sportflix.net case is full of interesting substantive issues and questions. However, right now, I am interested in only one aspect of the case: the MPTO filed the infringement action ex officio. When the MPTO starts an infringement action ex officio, one official of the MPTO prepares and files the action as plaintiff, while other official of the MPTO (not necessarily of higher rank) manages the procedure and renders a decision. Of course, there is no way to avoid a bias when the case, filed by one official of the MPTO, is to be solved by the guy sitting just two desks away.

There is no question that the MPTO has authority to file infringement actions ex officio and decide them. Sections 79, 155 and 188 of the Industrial Property Law authorize the MPTO to prepare, file and decide infringement, invalidation and cancellation actions. Actually, section 188 of the Industrial Property Law was amended on June, 2010, to encourage the MPTO to filed and decide infringement cases ex officio.

The fact that the MPTO may be more proactive in filing ex officio actions is positive in general. However I think the MPTO has to be careful about the justification to file an action ex officio.

All actions taken by the MPTO, especially if they involve starting ex officio a procedure against an individual or entity, must have as ultimate motivation the defense of public order or common good.

Preparing and starting ex officio an infringement action demands the use of the MPTO’s human and material resources and spending taxpayers’ money that will not be used in other tasks. Therefore, I believe the infringement procedure has to be aimed to cause a direct, clear, identifiable and specific benefit for the community in order to justify filing it ex officio. Infringement of the law and defense of legitimate private trademark rights is just not enough. Further, in the case of sportflix.net, the MPTO enforced preliminary measures, thus the MPTO is liable for the damages an losses that the preliminary measure may cause on the defendant, in the unlikely case that the MPTO decides there was no infringement. If the MPTO has to pay an indemnification, it will be with taxpayer’s money.

Again, it is good that the MPTO shows more willingness to start infringement actions ex officio. Neverthless, I am sure that Mountrigi Management Group Ltd. (owner of the Televisa trademark), TV Azteca, S.A. de C.V., Twentieth Century Fox Film Corporation, ESPN Inc., Turner Network Television, Inc. and Univision Communications Inc. have enough resources and know-how to strongly defend their trademarks and broadcasting rights in their own. Why then spending taxpayers money in defending them in an ex officio infringement action?

Without a proper and thorough justification about the higher good it pursues with the ex officio infringement action, the effectiveness of such procedures may be affected and the MPTO risks been seen as a government agency serving a few powerful interests instead of pursuing the common good. That would not be good for the MPTO, for the tradematk owners and for the IP system in general.

[1] El Financiero (Online edition: http://www.elfinanciero.com.mx/empresas/impi-investiga-a-sportflix-por-presunta-pirateria-de-contenido.html) Retrieved: September 28, 2017. Reforma (Online edition: http://www.reforma.com/aplicacioneslibre/articulo/default.aspx?id=1198259&md5=b2c3d9b354142bff90dd47d281c9c806&ta=0dfdbac11765226904c16cb9ad1b2efe) Retrieved: September 28, 2017.

[2] Ver https://www.gob.mx/impi/prensa/el-impi-realiza-acciones-respecto-de-sportflix-net

[3] Milenio (Online edition: http://www.milenio.com/hey/television/netflix-sportflix-ciudad_mexico-donde_ver-futbol-liga-partido-online-internet_0_1001299934.html) Date of review: September 28, 2017.

[4] La Afición (Online edition: http://laaficion.milenio.com/futbol/sportflix-deportes-streaming_deportivo-transmisiones_online-milenio-la_aficion_0_1004299573.html) Retrieved: September 28, 2017.

[5] https://mx.godaddy.com/whois/results.aspx?domain=sportflix.net&recaptchaResponse=03AOmkcwIA64Q5WivkGvjyQTh8xQIo3VgFOh6bts8-zI1fPrMn21x6wZ-gMGZ8CxE5MnLgaOrSk2lEJcrcQ2cfEbwZx_plEHDVPaoUFJLuPgqixFd44bSk-Qk1VjuKQOsMnsyMSHixNemCnDM0qcGPm7LjqDwngwsD0KRPWMkFGdrLqfIfcYLfof3Bamm6DymV_zSyk2A__w3enXdVhAoaGHaHMv7nAB8_rJOWf3frhdN9QCGhLWAKjLBsIiH4Gax9wnby45fbxaN–k0pWoJYJAEGGdVWSxFDPxifTNlcLNbpIIGl8qrUq3Nf_rY868mvGTMx8rhSPtlq. Retrieved: September 28, 2017.

La entrada The Mexican Patent and Trademark Office against the “Netflix of Sports”. se publicó primero en Reyes Fenig.

As a rule, a trademark registration is not enforceable against a third party that started using, in Mexico and in bona fide, a trademark identical or confusingly similar to the registered one, to identify the same or similar products or services, if such use started before the filing date in Mexico. Claiming a date of first use in the application creates an exception to the rule.

Further, as a rule, Mexican registered trademarks may be invalidated on grounds of earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark to identify the same or similar goods or services, provided that such use started before the filing date in Mexico and has been continuous[1]. Claiming a date of first use in the application creates an exception to the rule.

The claim of the date of first use in the trademark application does not have consequences before the issuance of the trademark registration. Mexico does not demand use of the trademark to issue the registration and claiming a date of first use would not expedite the examination of the application.

After the issuance of the Mexican trademark registration, if the registrant claimed a date of first use in the application, the resulting registration would be enforceable against a third party using an identical or confusingly similar trademark in Mexico identifying the same or similar goods or services, even if such use started before the filing date in Mexico. Only if the use began before the date of first use stated in the application, then the trademark registration would not be enforceable against said third party.

As I said before, the rule is that a Mexican trademark registration may be invalidated due earlier and continuous use in Mexico or abroad if the use started before the filing date in Mexico. However, as an exception, if the registrant claimed a date of first use in Mexico in the application, then the plaintiff in the invalidation action would have to prove that it started the continuous use in Mexico or abroad before the date of first use stated in the application, instead of the filing date in our country.

Stating a date of first use has an important downside. The Mexican Industrial Property Statute stipulates that a trademark registration may be invalidated if it was issued using false information stated in the application. Although I am not aware of any statistics available, most of the invalidation actions I have filed on grounds of false information in the application, were related to the date of first use stated in the trademark application. The Mexican Patent and Trademark Office and the courts had consistently decided that the plaintiff did not have the burden of proof to demonstrate that the date of first use stated in the application was false; it was the trademark owner who had to demonstrate the truthfulness or accuracy of the date of first use. Considering that affidavits of use have almost no value as evidence in Mexico, proving that the applicant did not lie when stating a date of first use could be very difficult, especially in cases when the date of first use was several years old.

According to the statute of limitations, the vulnerability of a registered trademark against an invalidation action due false information stated in the application has to be filed within a five-year term after the publication of the trademark registration in the Official Gazette.

As you may imagine, stating a date of first use in a trademark application could become a dangerous trap and a potential risk of invalidation.

Some judges did some isolated efforts to moderate the rigor of the cause of invalidation provided in the statute. For example, there was an old isolated precedent from 1990 that provided that the invalidation on grounds of false information stated in the application, namely the date of first use, should only be declared if the plaintiff proves that the trademark owner obtained an unfair advantage from such a date of first use claim or that the first use claim could cause an unfair competition situation. However, other judges not only did not follow the precedent, but most of them affirmed the opposite position.

Things changed recently. On July 2016, a panel of judges issued a binding precedent about the invalidation action on grounds of false information stated in the application[2]. The precedent basically states that, in a cancellation action claiming that the date of first use stated in the trademark application was false, the burden of proof to demonstrate that the date of first use on a trademark application was false is on the plaintiff.

The precedent will dramatically reduce the chances of getting a trademark registration invalidated due a false or inaccurate date of first use; it seems extremely difficult to prove that someone was not using a trademark in the date it stated I the application. Therefore, the plaintiff has to prove that it was materially or legally impossible for the trademark owner to start using the trademark in the date stated in the application. Other than the above, the plaintiff may file evidence suggesting that a date of first sue is false, but not an actual direct proof.

The precedent was not free of controversy, because of the technicalities it implied. A significant number of judges in the panel disagreed, and one of them even prepared a very interesting minority report.

In any case, claiming a date of first use now seems much safer for trademark applicants and owners than it was just a few months ago. The precedent could be fair for trademark owners, but it may also lead to illegitimate claims with dangerous consequences (read my post The relevance of the date of first use in Mexican trademark applications)

One question that remains to be solved is if this precedent may be applied to invalidation cases that started before the publication of the precedent. The Amparo Statute provides that binding precedents from the federal courts of appeals or the Supreme Court may not be retroactive. I think the provision prevents the federal courts of appeals and the Federal Court of Administrative Affairs from using the precedent to decide appeals filed after July 1, 2016. However, I believe the Mexican Patent and Trademark Office may start ruling cases using this new binding precedent, no matter when they were filed.

[1] It is not required to prove that the plaintiff’s trademark is well-known in Mexico; earlier and continuous use of the mark in any country is enough. The statue of limitations provides that such an invalidation action has to be filed within the third anniversary of publication of the issuance of the Mexican  trademark registration in the Official Gazette.

[2] “NULIDAD DE REGISTRO MARCARIO. CUANDO SE ALEGA LA FALSEDAD DE LA FECHA DEL PRIMER USO DE LA MARCA, CORRESPONDE AL ACTOR LA CARGA DE ACREDITAR LOS HECHOS CONSTITUTIVOS DE SU ACCIÓN”, at Semanario Judicial de la Federación, Volume II, No. 32, July 2016, page 1445. benefit-from-new-binding-ruling-precedent.

La entrada New binding ruling benefits owners of trademarks registered in Mexico that claimed date of first use. se publicó primero en Reyes Fenig.

Virtually all final decisions that the Mexican Patent and Trademark Office (MPTO) and the Mexican Copyright Office (MCO) issue may be challenged with the FCAA. Technically speaking, the challenge with the FCAA is not an appeal, but a trial, where the MPTO or the MCO are the defendants; these procedures are often referred to as “nullity trials”. However, I think “appeal” is a good analogy, so that is how I am going to call the procedures to challenge the final decisions of the MCO and MPTO.

The main purpose of the amendments to the Statute was shortening the time that an appeal takes to be decided. The press release issued after the enactment of the amendment explicitly stated that the FCAA expected a drop of up to 50% in the timing of deciding an appeal.

Basically, the amendment cut the terms to file and oppose appeals, to file final arguments and to cure flaws in the brief, among others. For example, the term to file and oppose the appeal was 45 business days; now, it is 30 business days. We used to have 15 business days to file the final arguments; the amended term is only 5 days.

The amended Statute also seeks to force judges to issue decisions faster.

The amendments are not applicable to appeals filed before June 14, 2016.

Oddly enough, the Statute, as amended, has a handful of technical inconsistencies, evidencing that Congress was not careful enough when preparing the amendment. However, I think the inconsistencies will not be an actual source of concern.

Although the terms cuts seem a good measure to reduce the time an appeal takes to be decided, I wonder if that was all Congress could do to make the appeal proceedings with the FCAA faster.

Further, in an appeal against the rejection or abandonment of a patent, copyright or trademark application, cutting the term to file the appeal implies reducing the opportunity of the applicant to adequately prepare the defense of its rights against a possibly illegal, even abusive, decision. In a time when the defense of humans rights at Mexican courts has taken an unprecedented push, making it harder to applicants to challenge the decisions of the MPTO and the MCO does not seem to harmonize with the pro personae tendency.

La entrada Mexico expedites appeals se publicó primero en Reyes Fenig.

On April 28, 2016, the Chamber of Representatives informed that it passed a bill that will amend the Mexican Industrial Property Law and insert an opposition system for trademark applications. The bill was approved by the Senate a few months ago, so all it takes is the publication by the President, which should happen soon. The amendment will be effective 90 calendar days after the publication in the Official Journal of the Federation.

(Update June 7, 2016: The amendments to the Industrial Property Law that introduced the opposition to trademark applications were published in the Official Journal of the Federation on June 1, 2016. The amendments and the opposition system will become effective on August 30, 2016)

The lack of an opposition system did not mean that trademark applications were not examined. The Mexican Patent and Trademark Office (MPTO) conducted the substantive examination ex-officio. If the examiner found obstacles, such as lack if distinctiveness, an identical or confusingly similar earlier registered or applied trademark covering the same or similar goods or services, or a well-known non-registered trademark, he issued an office action and allowed the applicant to answer and argue against the alleged lack of distinctiveness or similarities.

Further, if a third party believed that the approval of the trademark application could harm its rights, it could file an informal opposition. The informal opposition was a more or less short brief, calling the examiner’s attention to the existence of certain rights that could be harmed or infringed if the trademark application was approved. If the informal opposition was filed early in the examination proceeding, it had a good chance of being considered by the examiner and even cause the abandonment or final refusal of the opposed application.

The informal opposition was particularly effective to inform the examiner about the existence of a trademark application with a priority claim that predated the filing date of the examined application. It was not so effective when the ground of the opposition was earlier use in Mexico or abroad of an identical or confusingly similar trademark. If the MPTO approved an application for a trademark that was confusingly similar to another trademark used by a third party in Mexico or abroad to distinguish the same or similar goods or services, such third party could file an invalidation action, provided that it could prove that the use was earlier and continuous.

There has been an actual formal opposition (that has never been called like that) that takes place when a trademark application is subject of a final refusal because of the existence of an earlier registered or applied trademark in Mexico and the applicant files an appeal with the Federal Court of Tax and Administrative Affairs (FCTAA). In those cases, the court would serve a copy of the appeal to the owner of the anticipation, allowing it oppose the appeal by defending the legality of the final refusal, and even filing a final appeal (amparo) if the FCTAA’s decision were against the MPTO (see my earlier post Oppositions to trademark applications in Mexico).

Under the new opposition system, trademark applications will be published within ten business days after the filing date, regardless if formal requirements were meet. Third parties would have a one-month term to file an opposition.

The possible grounds for opposition will be broad, but limited to the substantive causes of non-registrability provided in sections 4 and 90 of the Mexican Industrial Property Law. For example, possible grounds of opposition would be descriptiveness of the trademark, illegal reproduction of the name or pseudonymous of an actual person, or the existence of an earlier identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services.

On the other hand, earlier and continuous use (in Mexico or abroad) of an identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services may not provide grounds for an opposition. Bad faith of the applicant because it was the licensee, representative, distributor or agent of a foreign trademark owner may not be a valid cause of opposition either. In these cases, the only available remedy has been and would be an invalidation action against the Mexican trademark registration.

There will be a government fee for opposing a trademark application. I do not know how much it will cost, but the reason behind the government fee is discouraging frivolous oppositions, thus I would expect it to be around US$150.00.

Oppositions would be published, and the applicant will have one month to answer the opposition and file arguments and evidence to support the application.

The Mexican opposition system intends to be simple and avoid becoming a burdensome time-consuming proceeding, as it happens in some South American countries. The opposition will be more a source of information for the examiner than a contentious proceeding (somehow similar to the ‘Letter of Protest’ in the United States) .

After the MPTO decides issuing the trademark registration or the final refusal of the application, the opposing party will receive a written communication informing about the success of the opposition or the approval of the trademark application. If the opposition were not successful, the opposing part may file an invalidation action.

Would the new opposition system significantly change the state of things in Mexico? I don’t think so.

In my opinion, the new opposition system provides rules and terms to an existing practice, without actually changing it. Trademark applications will continue being examined in the same way they used to. Further, the opposition and the result would not prejudice about third party’s rights or the intrinsic legality of the trademark registration, and the causes of invalidation will be available regardless if there was as opposition.

The lawmakers that supported the bill stated that the adoption of the Madrid Protocol encouraged the creation of the opposition system (I do not see the connection). According to the lawmakers, the opposition will help to reduce the number of invalidation actions, improve the quality of trademark examinations and provide right-holders –especially owners of earlier Mexican trademark registrations and applications- with a very cost-effective tool to protect their rights.

La entrada Mexican Congress approves trademark opposition system. se publicó primero en Reyes Fenig.