New provisions for trademarks in Mexico

Non-registrable signs
Proving acquired distinctiveness
Comment

The latest amendments to Mexico's IP legislation – issued on 18 May 2018 and confirmed through the Federal Law for Protection of Industrial Property of 1 July 2020 (the IP Law) – incorporate various new legal provisions for trademark registrations based on use.

Non-registrable signs

Article 173 of the IP Law provides a list of non-registrable signs, which includes:

• the technical or commonly used names of the goods or services intended to be distinguished by the trademark, as well as words, denominations, phrases and figurative elements that, in ordinary language or commercial practice, have become usual or generic elements thereof, in addition to those that lack distinctiveness;
• three-dimensional forms or industrial designs that:
  • are in the public domain;
  • are commonly used or lack distinctiveness;
  • constitute the usual and ordinary form of the products; or
  • are imposed by the products' nature or functionality;
• holograms that:
  • are in the public domain; or
  • lack distinctiveness;
• signs that, taking into account all of their characteristics, are descriptive of the products or services that they intend to distinguish. "Descriptive or indicative signs" include those that are used in trade to designate the species, quality, quantity, composition, destination, value, place of origin or time of production of the goods or services;
• letters, digits or names thereof, as well as isolated colours, unless they are combined or accompanied by other signs that give them a distinctive character; and
• translations, transliterations, capricious spellings, variations and artificial constructions of unrecorded words.

The new amendments state that these restrictions shall not apply where:

• the mark has already been used in trade on the goods or services for which it is sought; and
• the mark has acquired a distinctive character in Mexico, pursuant to the regulations of the IP Law.

Where a trademark is granted for acquired distinctiveness, article 231 of the IP Law states that the circumstances underlying such distinctiveness must be stated in the registration certificate.

This amendment improves the protection of trademarks that previously had limited registration possibilities. It is also an opportunity to adopt the precedents of countries that have substantial case law concerning secondary meaning, such as Argentina and the United States.

Proving acquired distinctiveness

Although the new provisions allow for the registration of trademarks based on acquired distinctiveness, the IP Law does not establish the specific elements to prove such distinctiveness.

Therefore, taking into consideration foreign precedents, the following elements should be considered:

• consumer knowledge – substantial consumer knowledge of a mark can be proved through market surveys. Such surveys can be used for trademarks that are capable of uniquely identifying not only the goods or services themselves, but also the source thereof. To establish secondary meaning, it must be shown that the primary significance of the term in the mind of the consumer is not the product, but the producer;
• duration – to prove that the mark has been used for a certain amount of time (five years before the date on which the claim of distinctiveness is made is the period that is effectively recognised in some jurisdictions) it is necessary to demonstrate that the mark has become distinctive of the applicant's goods or services by reason of its substantially exclusive and continuous use in commerce; and
• other evidence – it can be useful to show advertising efforts over a considerable period or even prior registrations in countries that speak the same language as that used in the trademark.

Proving at least two of these elements should be enough to obtain registration for non-distinctive trademarks in Mexico that have acquired distinctiveness.

Comment

In light of this amendment, Mexico is now one step closer to a more robust IP legal system. The remaining challenges include updating IP regulations to include specific requirements and documents for the recognition of secondary meaning.

For further information on this topic please contact Emilio Albarrán Núñez at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.