Latin America

Trademark Law changes in Mexico

Posted on 18/06/2018 by balder

Spain

As you may recall from our last update (http://balderip.com/en/trademark-law-changes-in-mexico/), the Mexican Trademark Law will undergo some important changes, which will come into force on 10 August 2018.

The changes will include, amongst others, the following:

  • Sound, smell and hologram marks will now be registrable.
  • Secondary meaning is now recognized as an exception to descriptiveness, if it is shown that distinctiveness has been acquired as a result of commercial use.
  • A trademark application that partially or totally reproduces or imitates copyright works and/or its elements, will now be considered as a legal impediment. The Mexican Trademark Office may issue a potential rejecting decision against the application.
  • Bad faith is seen as a legal impediment for granting a trademark. Bad faith is defined as follows: the mark is applied for against the good practices, uses or customs of the Industrial Property System, commerce and industry, or when an unlawful benefit or advantage is sought. Bad faith is introduced as a ground for the nullity of a trademark registration. Such action may be exercised at any time.
  • The declaration of use must be submitted after three (3) years, counted from the granting of the registration, and within three (3) months following these three (3) years. The uninterrupted use of the mark during the afore-mentioned three (3) years must be demonstrated. If no declaration of use is filed, the mark will be declared abandoned.
  • In case an Office Action is issued against a trademark application on the grounds of any prior rights existing, the applicant will from now on have the possibility to overcome the objection by submitting a coexistence agreement or a letter of consent signed by the owner of the earlier trademark.
  • Certification trademarks will be incorporated in order to distinguish goods and/or services which quality or characteristics (components, processing conditions, quality and processes) have been certified by their owners.
  • The declaration of reputation or fame of a trademark may now be requested without being previously registered before the national Trademark Office, covering the goods and/or services for which said reputation or fame exists.
  • The examiner is compelled to consider oppositions filed by third parties. Evidence can be submitted. Upon receiving a response to the opposition filed by the opponent, a period of 2 working days is granted in order to file pleadings. An opposition procedure will, however, neither suspend the application proceedings, nor determine the outcome of the substantive examination.
  • It is mandatory to register the trademark as it will be used.
  • The goods and/or services must be well specified. It will no longer be possible to claim designations included in the class heading of the Official Classification, unless such goods and/or services are contained in the classifications themselves.
  • There will also be changes in terms of trademark renewals: (1) When requesting a renewal, the owner must file evidence of the effective and real use of the mark. (2) Trademarks in the renewal grace period will be considered as legal impediments for the registration of identical/similar trademarks. (3) It will no longer be possible to achieve the renewal of a trademark registration accrediting only the use of a single good and/or service. The use of all the goods and/or services for which the trademark was registered, has to be demonstrated. (4) The provision which allowed to take advantage of the declared use in the renewal of a record will be abolished in order to accredit the use of other goods or services of a third registration.
  • In relation to procedures of administrative nullity actions of marks, the following changes will come into force: (1) It will no longer be possible to file a nullity action based on the assumption of “error or inadvertence”. (2) Nullity actions may be filed, based on bad faith. (3) The term to file a nullity action is now counted from the previous use in Mexico, or abroad of 5 years (previously, 3 years)