Relevant aspects on the trademark field in the new federal Law in Mexico

12 November 2020

Highlighting relevant aspects of the new trademark Law in Mexico.

12 November 2020

As a result of the United States–Mexico–Canada Agreement (USMCA), the new Federal Law for the Protection of Industrial Property was published, abrogating the current Industrial Property Law. The new law “LFPPI” entered into force on November 5, 2020.

This article will highlight the most relevant aspects that applicants will face during trademark prosecution, and the increasing role of the Mexican Institute of Industrial Property (IMPI) in trademark litigation.

Validity term

The counting of the validity of 10 years for the trademarks will start on its registration date and the filing date will not be considered for this purpose. The priority date remains the filing date.

Filing on use intention

Following the old rules, trademark applications may claim a prior use. It has however been reinforced that the truthfulness of such first use claim is essential since possible nullity actions on grounds of false data benefit from a shift of burden of proof. If the trademark holder cannot prove the first use the trademark will be declared null and void (art. 258 III). Necessary as well is now to provide an address of the establishment related to the first use of the trademark.

Prosecution timelines and Office Actions

The examination process has speeded up and the new rules do reflect the recent examination reality. The new law establishes that the IMPI will conduct the formal and substantive examination jointly (art. 225). Consequently, the IMPI will issue only one official communication containing formal requirements and objections as well as oppositions filed by third parties. There is a term of 2 months in order to file a reply, with only one possible extension of 2 additional months.

Partial Cancellation actions

The new law establishes the possibility of partially cancelling a trademark registration if a specific product or service protected by the registration challenged is not in use. This measure (together with the declaration of use after 3 years of registration) will facilitate the registration of new trademarks, “blocked” so far by older trademarks with broad class headings for their products and services. Although since the latest amendment of the Industrial Property Law in August 10, 2018, the IMPI has insisted on the specificity of the list of goods and services, the reality is that there are still many registrations covering headings that are still being cited as impediments for new applications. Hence, the former will be easier to tackle with the new provisions. Unfortunately, this change will only be applicable to trademarks registered after the entry into force of the new law.

Oppositions

– Oppositions (and replies thereto) will still be assessed by the examiner during substantive examination. Several experts are interpreting the new law as making the reply to the opposition a necessary requirement to enter into substantive examination. We understand that this will not be the case; however, the practice and future criteria by the IMPI will have to be carefully assessed. In any case, we do recommend monitoring applications, especially those originating from the Madrid system, in order to respond as early as possible to reasonable oppositions and convince the examiner as early as possible.

– There is a limitation to the exercise of nullity actions against trademark registrations, whenever an opposition has been previously filed, namely that arguments and evidence shall be new (art. 259). It will be important to monitor the Mexican higher Courts’ criteria, as well as to carefully evaluate when to use oppositions, appeals and/or nullity actions.

Letters of Consent

Having more acceptance but still on examiners discretion since the last amendment of IP law in 2018, we notice that this legal instrument grows in importance and usability, being codified in article 173.

Well-known and famous trademarks

The new law specifies that a trademark in Mexico can be declared famous if it is demonstrated that it is known by most of the consumer public in Mexico, or if it has sufficient diffusion or recognition in global commerce. It has yet to be determined whether this new wording in the law actually considers the recognition of the mark in foreign countries as sufficient in this regard. In any case, the provisions lower the threshold for necessary evidence to be revealed which makes obtaining this status less risky in terms of confidentiality.

Declaration of use

– The requirement of the declaration of use which was implemented by the amendment of IP law in 2018, remains (after third year of registration and with the renewal). The good news for applicants, especially those using the Madrid system, is that IMPI (art. 237) shall now inform the applicant of a deadline of 2 months to submit the declaration of use, if it was missing at renewal. Since the DoU must be presented through a local agent and IMPI still does not inform on regular basis on oppositions or cancellation/nullity actions against a trademark filed through the Madrid system, it is still highly advisable to appoint local agents.

– The express condition to record license agreements for the use of trademarks is withdrawn.

– Partial nullity action will be possible.

– Bad faith objections and nullity grounds are maintained. However, the concept is rendered more precisely. Hence, “bad faith will be understood, among other cases, as having requested a registration of a mark with the purpose to obtain an undue benefit or advantage in prejudice of the legitimate owner”.

Infringement and litigation

– The IMPI receives the faculty to attend damages claims; it is exposed a duality of options to claim damages, through a civil court or through the same IMPI.

– The conciliation faculties of the IMPI receive more precision and structure.

– The IMPI obtains relevant powers to establish and collect fines.

– Notifications are facilitated by edicts when the domicile is unknown.

Even though the new law consists of detailed provisions, the exact scope of the mentioned changes will be determined by the new practice of the IMPI and further implementation rules.

Please do not hesitate to contact our Latin American Desk (latinamerica@herrero.es) for any question you may have.

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