A brief overview of 2018 amendments to the Industrial Property Law.
Mexico jumps into modernity and incorporate new trademark figures for meeting current marketing strategies which make a product or service more attractive or distinguishable from others. The amendments in distinctive signs create a modern and dynamic legal frame to meet international legislations and practices in which Mexico now participates.
On Tuesday April 3rd, 2018, Mexican Congress approved the amendments to the Industrial Property Law (IPL) regarding Trademarks. These amendments came into force on August 10th, 2018 changing forever the trademark concept and practice in Mexico.
Some of the most relevant changes, are for instance, the introduction of the definition of “bad faith”, broad descriptions are no longer admissible when filing applications, coexistence agreements / letters of consent are now regulated, compulsory declarations of use, etc. are among the most important aspects.
But perhaps one of the biggest changes was the amendment to Article 88 of the IPL to introduce new types of marks.
Before the amendment, Article 88 defined a mark as: any visible sign that distinguishes goods or services from others of their same type or class in the market.
On the other hand, Article 89 of said Law included that the following signs may constitute a mark:
II.- Denominations or visible devices sufficiently distinctive capable to identify the goods or services they intent to cover, from others of their same class or type;
II.- Three-dimensional shapes;
III.- Commercial names and denominations or corporate names;
IV.- The name of an individual as long as it does not lead to confusion with a registered mark or a published commercial name.
The IPL clearly stated that a requirement for a mark to be consider as such, had to be “visible”, therefore precluding the possibility of considering and protecting non-visible signs such as sounds, scents or textures.
But complying with the requirement of “visibility” was not sufficient, since holograms or motion figures, could not be protected as marks since article 90 of the IPL regulated that the “Denominations, figures or three-dimensional shapes which were animated or expressed in an animated way regardless their visible character could not be registered.
In view of the above, those that relied in Mexico solely on non-traditional marks, regardless some of them are fully capable of functioning as a mark, were not properly covered and asserting their rights was certainly a challenge.
The amendments brought fresh air to Mexican practice; Article 88 of the IPL above cited was amended to read as follows: A mark is understood as any sign perceptible by the senses and susceptible of being represented in a way that is possible to determine the clear and precise object of protection, and distinguishes products or services of others of the same type or class in the market.
The requirement of visibility was deleted and opened the possibility of considering as marks sounds, scents, trade dress, etc, since now a mark can be protected as long as is perceptible by the senses.
In addition to the introduction of non-traditional marks, Mexico amended the standard for registration.
Before the amendment, Mexico applied a standard of inherent distinctiveness for registration. Consequently, non-distinctive three-dimensional marks for instance could never be protected even if they had acquired secondary meaning. This represented a particular challenge for owners of international marks which may well have invested millions of dollars in advertising to ensure that consumers from all over the world can identify the source of the goods.
Fortunately, the IPL has been amended and now a non-distinctive three-dimensional mark is subject to registration under particular scenarios.
Commerce has acquired a new meaning as a result of globalization and the Internet. Trade and service marks have not been set aside. Companies adopt whatever marketing technique that may represent an advantage in the penetration of a market of interest, in many cases impacting directly their trademark portfolio.
With the recent amendments, Mexico is modernizing the Industrial Property principles and provides with adequate protection to marketing techniques which create awareness though the use of signs that could not be protected as marks before, such as sounds and trade dress for instance before the amendments.
More distinctive signs subject of protection were introduced as a result of the amendment, for instance, certification marks are now registrable, geographic indications, and holographic signs. Approaching local counsel is highly advised to explore how these new tools can beneficiate trademark owners when trading in Mexico.