On April 3, 2018 the amendments to the Mexican IP Law were approved by the Senate in ordinary session unanimously and turned to the Executive Branch for enactment.
In Clarke Modet & Co. Mexico, we have the pleasure of updating our clients with relevant information of the upcoming amendments due to the active participation that the Firm has had in lobbying said upcoming modifications to the Mexican IP Law. Of the amendments proposed, the following are the most important:
Amendments proposed are focused towards; a broader concept of trademark, collective trademarks, notorious and famous trademarks as well as certification marks, the specifics are as follows:
1) An amendment to Article 87: any person being natural or legal can make use of the mark or marks in industry or commerce and not only businessmen or services providers as it was established before.
2) An amendment to Article 88: New definition of trademark: "any sign perceptible to the senses and susceptible of being graphically represented, which is capable of distinguishing goods or services in industry or commerce from one and other". This new definition introduces to Mexican IP Law, the protection of Non-Conventional Trademarks such as sound, scent and holographic marks.
3) An addition to the Mexican IP Law, regarding an "Acquired Distinctiveness" which can be understood as trademarks that despite of being considered descriptive or do not have distinctiveness can be subject to registration as a result of their use in commerce.
4) Pointing out that a collective mark registration can be prosecuted by associations or legal entities duly organized and existing under the applicable territorial laws that produce, fabricate or commercialize products or offer services, which will serve to distinguish goods or services directly commercialized by their members as long as this goods or services have a direct correlation between them and are sufficiently distinctive towards third party goods or services.
5) The amendment proposes a broader protection of Collective Marks which includes Certification Marks (The definition of certification trademark which is also part of trademark definition per se, in direct correlation that their main goal is to distinguish goods and services, but allows that natural or legal persons are able to use an "additional trademark" along with their base or individual mark, with the sole purpose of guaranteeing the consumer that their goods or services protected by their certified trademark are already distinguishable with special or individual characteristics).
6) An option is established by means of which the geographic indications can be filed for protection as certification marks, maintaining therefore, their essence. With this new scope of protection, a balanced system is created between trademarks, geographic indications and appellations of origin.
7) There will be a period of closing arguments during the Opposition proceeding.
8) The amendment includes a "Declaration of Use" requisite, which consists in the owner of a trademark registration must prove the effective use of the mark in Mexican territory. Said declaration shall be filed before the Mexican Patent and Trademark Office within the first three months of the third year of registration. If a declaration is not filed, the registration will be subject of cancellation.
9) When filing for renovation of a trademark registration; a declaration of use must be filed along with the renovation application.
10) The provisions contained in Article 115 related to disclaimers are now abolished.
11) An amendment to Article 183: establishing that the Mexican Intellectual Property Gazette is the only way to formally serve with notifications to the applicants and owners.
12) Regarding the Nullity Action proceeding in relation to article 151, the terms to file before the Mexican Patent and Trademark Office are modified according to: provisions contained in section II (a mark is confusingly similar), section III (false data in application) and section IV (miss appreciation of the MPTO) will have a non-extendable term of 5 years from the date of publication in the Mexican Intellectual Property Gazette. Provisions contained in section I (against provisions of Law), section V (the authorized agent or user of the mark in a foreign country, files for registration) and the new added section VI (obtaining a registration on bad faith) can be filed at any time.
We will be pending of further information in order to disclose it to our clients, whenever the Amendments are in force, we will keep you duly informed, as well as keep you up to date regarding the procedural changes that may come.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.