Trademarks - New Federal Law For The Protection Industrial Property


Trademarks - New Federal Law For The Protection Industrial Property

On July 1, 2020 an amendment to the Federal Industrial Property Law was published in the Official Diary for the Federation, which addresses the need to homologate national legislation in the area of Intellectual Property with the treaties entered into through the USMCA Agreement. This new law will take effect 90 working days after its publication.

The new law mainly includes the following changes:

Trademark Examination:
  • It is necessary to include the email address of the trademark owner in the procedures.
  • The specific products and services which the trademark applies to must be highlighted in the application.
  • A first use date, should there be one, must be indicated. Before, this first use was limited to Mexico, whereas the new law does not limit a territory.
  • In nominative marks, it must be expressly stated that the characters are used in standard form.
  • In case the trademarks applications are in joint ownership, anyone of the joint owners shall be able to defend the rights to the trademark, unless the use rules indicate otherwise.
  • It is no longer an impediment to register signs which violate good use and customs as trademarks, the only remaining prohibited aspect is the registration of trademarks requested in bad faith.
  • Once the month to file an opposition has lapsed, the trademark applications will be subjected to a single examination (administrative and substantive).
  • As a consequence of the examination, only one Office Action may be issued which will include requirements, legal impediments and oppositions, with a total period of 4 months to respond and present evidence regarding the opposition. Should no response be filed, the application will be abandoned.
  • It establishes the pathway for the suspension of a trademark and changes the following: the suspension must be applied for within the two month period set by this law, so that no grace period is allowed and it can also be suspended through jurisdictional or administrative authorities’ orders.
  • Once the period for filing arguments to opposition has lapsed (should there be any), the MX PTO will proceed to issue their resolution for the trademark application.

  • The term for trademarks, commercial notices and commercial names will be 10 years from the granting date. Prior to this, the term started from the legal date.

  • The main points which characterized the previous law regarding famous and well known trademarks have been kept, with a few changes:
    1. The new law allows protection for trademarks which were not necessarily known in Mexico, therefore broadening protection for trademarks recognized in the world market;
    2. The MX PTO will issue an impediment Office Action for the new trademark application, based on the existence of a trademark it considers famous or well-known. This Office Action can be driven by a prior opposition writ filed by the owner of the well known or famous trademark, or by the discretional power vested in the Authority;
    3. The obligation of filing information considered as confidential has now been eliminated, such as: undertaken investments, amounts of product or service sales for the trademark, market values which the trademark represents, etc.

  • The owner of a certification trademark must constantly verify the qualities or characteristics of the products or services, in addition to the components and the geographic origin thereof.
  • The person applying for a certification trademark, in addition to not commercializing the certified products or services, must also be a legally constituted person who accredits the certification activity according to its corporate purpose.
  • With this new law it will be possible to cancel a certification mark when its owner:
    • a) Does not control or can legitimately exercise control on the use of the trademark;
    • b) Is involved in the production or marketing of any product or service using the trademark;
    • c) Allows use of the trademark for any purposes different than the certification; or
    • d) In an indiscriminate manner denies certification or continues to certify products and services for any person who keeps the norms or conditions which said trademark certifies.

  • With the new law amendments, opposition becomes binding for the MX Trademark Office as well as for the involved parties.
  • Once the application is published in the Official gazette, a non-extendable term of one month to file an opposition in writing will begin, alongside the power of attorney and corresponding payment.
  • During examination undertaken for application, the MX Trademark Office will inform applicant of the filed opposition, so that he may act according to his rights within a two month term, with the possibility of two additional months (for a total of four months). Should a response to the opposition not be filed, the application will be abandoned.
  • Once the term for responding to the opposition has lapsed, the MX Trademark Office will open a final arguments time frame, which will be 5 days, so that both the applicant as well as the opponent may act according to their rights. Once this term has lapsed, the MX Trademark Office will issue the resolution corresponding to the trademark application.
  • The MX Trademark Office will issue a response to the opposition, presenting arguments substantiating the resolution.
  • The opposition will not prejudge the result of the examination which MX Trademark Office will subject the application to, but the Examiner must study it and take it into account.

  • Trademarks granted after August 10, 2018, must declare use indicating the specific products/services they are applied to. The declaration must be filed before the MX Trademark Office during the 3 month period subsequent to the three year anniversary from the date on which the registration was granted. Should a declaration of use not be filed, the registration will expire of its rights.
  • It establishes that, at the moment of filing the renewal, it must be declared under oath that there is no deception or bad faith in the description products or services, and should this not be the case, the MX Trademark Office has the power to start a nullity procedure against the registration.
  • The renewal application may be filed six months prior to or six months after the effective date. Similarly, it must declare use for the products/services for which the trademark is used in Mexico.
  • The scope of protection of the registration shall only apply to those products/services which are expressly highlighted in the Declaration of Use. This provision was previously applied de facto but is now expressly incorporated into the law.
  • If a trademark is not used for three consecutive years for the products or services for which it was registered, the registration will expire, or should the case apply, a partial expiration for the products or services which are not being used.
  • In case no renewal is filed, the registration will expire of its rights.

  • The obligation to register the license in case of damages to third parties is eliminated.
  • Now the person who holds a granted license may defend it despite it not being registered with the MX Trademark Office.
  • Consent agreements may be filed to avoid rejection on the basis of “linked marks” for assignment purposes. The above will not be possible for identical trademarks applied to identical products or services. The Mexican Trademark Office will resolve it seeking to minimize confusion to the public regarding the origin of the products or services.

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