On March 22, 2018, the Mexican Senate approved a Decree whereby some articles of the Mexican Industrial Property Law (IPL) were amended and new provisions dealing with trademarks were introduced.
The Decree is yet to be published in the Mexican Official Diary so that becomes in full force. We expect the publication to be effected soon.
The main highlights can be summarized as follows:
· It is incorporated for the very first time in Mexico, trademark protection for non-visible signs, such as smell marks and sound marks, as well as for certain animated marks such as holograms and for the so-called “trade-dress” in a broader manner.
· Acquired distinctiveness (secondary meaning) will be recognized as an exception to the absolute grounds for refusal.
· Consent and coexistence agreements will be allowed to overcome senior rights, except when dealing with identical trademarks for identical goods or services.
· Bad faith, in a broad sense, is incorporated as a ground for opposition, and also as a ground for invalidation.
· Protection for Certification marks is recognized.
· Class headings will no longer be possible. It will be necessary to be specific in products and services descriptions according to the Nice Classification.
· Oppositions will become binding for the Trademark Office, which therefore will have to issue decisions duly grounded and justified based on the merits of each opposition filed.
· In order to clear-up the Mexican Register from non-used marks, it has been established a use declaration under oath , which must be filed within the next three months after the third anniversary of the date of grant of the trademark registration. If no use is declared by such date, the registrations will automatically lapse.
· It will no longer be possible to renew a trademark registration in certain class based on the use of the same registered trademark in other class.
We will follow-up on this subject immediately after these amendments are published in the Mexican Official Diary.