1. – WHAT IS A TRADEMARK?
Pursuant to Mexican Industrial Property Law, a trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others. Moreover, trade names and legal names may also be registered as trademarks for “doing business as”, as long as they do not incur in any of statutory limitations provided by law; even the proper name of an individual may be registered as a trademark, if it’s not likely to be confused with previous registered trademarks or published trade names.
Lastly, a novel addition to Mexican Trademark Law provides trademark protection to three-dimensional shapes that serve as trademarks.
2. – IS IT NECESSARY TO REGISTER MY TRADEMARK IN ORDER TO ESTABLISH RIGHTS?
It is not necessary, you can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits and advantages, namely that such trademark met the necessary elements to be considered legally as a trademark.
It is concerning to notice that many entrepreneurs establish their company producing, advertising, distributing and selling products (or rendering services), assuming that the words appointed to distinguish their name could be used as a trademark, however, witnessing in prosecution that such designation may be denied under generic grounds for rejection, after finding that the primary significance of the mark is more relevant to the public rather than inviting to distinguish a purchaser motivation of the goods or services on, or in connection with those which it may could have been used, therefore, lacking the necessary attributes to be considered admissible to the Office.
3. – ARE THERE SITUATIONS THAT REQUIRE MANDATORY FILING AND REGISTRATIONS OF TRADEMARKS?
Pursuant to Mexican Industrial Property Law, registration is not mandatory, but as an exception, Mexican IP law provides that the Mexican Patent and Trademark Office may order an obligatory use and registration, or even restrictions from using certain trademarks, depending upon the intentions and objectives of use for each mark, namely appointing the following situations:
a) When the mark has been or is being used to violate the antitrust laws, or is associated with monopolistic or oligopolistic practices or with unfair competition, alleging severe distortions for the production, distribution or marketing of certain products or services;
b) When the use of the mark prevents the distribution, production or marketing of certain goods or services;
c) When the use of a trademark prevents, encumbers or impedes the production, supply or distribution of basic goods or services to Mexican people, during a national emergency and throughout its duration.
4. – IS THERE A CRIMINAL PENALTY FOR USING AN UNREGISTERED TRADEMARK?
The legal nature of voluntarily filing an application, seeking the registration after administrative clearance, benefits the applicant deeming himself as willfully intending to be, and being, the current and subsequent user. This evidences applicant’s legal intent to avoid being entitled to penalties surfaced from infringing other right holders, scheduling under oath and declaring goodwill to prosecute an application aiming to traverse actions until grant or rejection without being awarded for a criminal offense.
However, in cases where a person uses a trademark that might clearly be deemed under absolute grounds for rejection, the person is liable and could be endorsed for an administrative offense and infringement punishment.
Such is the case of marks that consists of, or comprise, the flag or coat of arms, or other insignia of any nation, or simulations thereof, or that comprise a name, portrait, or signature identifying a particular living individual without his written consent, whatsoever, even copyright titles, trademarks that may cause confusions, or mistakes, or to deceive, pseudonyms, copyrighted titles of literary, artistic and scientific works, misleading marks, or trademarks declared as notorious or famous, since even when notorious and famous trademarks are deemed as unregistered, their use, may generally lead to administrative offenses for committing a presumably willful infringement.
In these cases, after concluding the administrative infringement procedure as provided by Law, the user of such illegal offense might still be awarded for penalties that may range from fines to permanent closure and even detention.
On the other hand, it is important to bear in mind that using an unregistered trademark could infringe third parties’ previously acquired rights, which could be punished as an administrative offense or as misdemeanor or criminal offense by IP law.
5. – WHAT ARE THE BENEFITS OF FEDERAL TRADEMARK REGISTRATION?
Owning a federal trademark registration on the Principal Register provides a legal presumption of the ownership of the mark and an exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.
This exclusivity publicly notices of applicant’s claim of ownership of the mark, allowing the owner to oppose to any unauthorized use, with the possibility of bringing actions concerning the mark in federal court, and using each registration as a basis to obtain registration in foreign countries.
6. – ARE THERE ADDITIONAL ADVANTAGES ARISING FROM THE FACT OF REGISTERING A TRADEMARK?
It is difficult to determine a list of acquired rights directly related to the moment of registration, however we may ensure an erga omnes exclusivity in favor of the owner, and the fulfillment of a requirement for enforcing rights in the mark against infringers.
The main advantages focus on the following aspects:
a) From the moment of filing the application, the intended registration is listed within Mexican Patent and Trademark Office’s databases of examination, letting the examiners to communicate further applicants (at least) a constructive notice of the existence of a previous similar trademark that may fairly prevent registration in the same class or for similar goods or services in different classes;
b) After the MPTO registers a mark, and the record is obtained, the applicant is thereafter Officially recognized as owner of such trademark, asserting that such registered trademark refrains from infringing previously acquired rights of third parties, and that it certainly qualifies as a legitimate registrable mark, preventing criminal, civil and administrative offenses, violations, penalties and crimes;
c) It is critical to note that after obtaining a trademark registration, there are favorable internal business influences happening, specifically concerning the commercial appraisal of the complete business and of each part of the new intangible assets portfolio, maximizing profits negotiating issues in connection with mergers, acquisitions, joint ventures, sales, buyouts and workouts.
d) After the trademark registration has been granted by the Office, the right holder is able to negotiate royalty-free licenses or per-port charged royalties entered in related agreements, also including franchise agreements, allowing the holder to execute creative licenses, fairly collecting royalties, or transferring rights.
e) Another benefit from trademark registration, is the right to use the registration symbols, namely, MR, TM, ®, or “Marca Registrada” to alert the public from claiming the ownership of the mark. Applicants and right holders may only use the federal registration symbols to discourage imitations after the Trademark Office actually registers a mark, and not while an application is pending.
After designating these symbols on marks, competitors and general public notice, and are evidenced of, commercial seriousness and fair legal interests, as are claimed from ownership of the mark by the right holder, implying certain attentiveness to distinguish from other competitors.
7. – ARE THERE CONDITIONS OR LIMITATIONS TO THE EXCLUSIVENESS GRANTED FOR USING A GRANTED MARK REGISTRATION?
There are specific conditions and limitations prescribed by law as to the mode or place of use of a mark, we summarized the following topics:
a) Despite the fact that several marks obtained in various countries, as in Mexico, offer marginal or relative protection recognizing the registration as a basis for filing additional applications under international treaties in other different countries, the protection conferred by Mexican IP law to a trademark is national in scope and therefore is prima facie limited to the territory of the country having issued the corresponding registration, bearing in mind when preventing and managing risks, that the owner or right holder of a mark is legitimately the only person able to bring an action concerning administrative and judicial injunctions.
b) A trademark registration should be valid as long as every post-registration maintenance document is timely filed, therefore, we strongly advise our clients to collect, gather and keep evidenced schedules and documents that may demonstrate use during the following years after registration of their marks. We may also gather and preserve strong preventative evidence against risks, attesting factual use of trademarks through public declarations and oaths after covering official government fees provided by Public Officers and/or attesting notaries at our client’s request. This strategies were developed, and are currently being practiced, in order to circumvent further future cancellation actions that may expose to different risks to the mark, including situations wherein a trademark cannot be revived or reinstated.
In Mexico and abroad, it is necessary, in order to keep in force and with full effects the exclusive rights conferred to the trademark’s owner or right holder, to comply with each trademark pertinent legislation, nevertheless, unambiguously deeming crucial to use and to intermittently renew such trademark registrations by the owner in accordance with the specific regulations and requirements of each jurisdiction, pursuant to explicit law requirements of every country.
c) The right of exclusiveness granted after the registration of a trademark is limited to identify specified word(s), phrase(s), symbol(s) or design(s), or combinations thereof, only for the goods or services for which the application was sought, distinguishing obtained goods or services from others by conspicuously testing and analyzing this factors.
8. – IS IT COMPULSORY TO HAVE USED A TRADEMARK WHEN APPLYING TO OBTAIN REGISTRATION?
Not within Mexican territory. Contrasting many countries and jurisdictions, that pursuant with their laws require a mandatory use or filing declarations acknowledging intentions of use and specimens, enacted Mexican Industrial Property Law establishes that any person in the industry, merchant or service provider has the right to, apply for, and to acquire exclusiveness of use with its own trademark, after showing previous/first use, a mere intention of use, or just its will to prosecute and be declared by the Office with standard trademark’s rights.
9. – ARE THERE SPECIFIC ESTABLISHED RIGHTS ENTITLED TO THE USER OF AN UNREGISTERED TRADEMARK?
Even when our legal system comprehends first and foremost benefits for protecting applicants and registered trademarks, there are also established rights for trademarks based on use of the mark in commerce, considering continuous documents goodwill and uninterrupted use, but without a registration.
This is emphasized by Mexican IP law, namely under provisions concerning innocent infringers, prescribing that a registered trademark will not produce legal effects against another third parties’ unregistered trademark, as long as such person has a bona fide intention when selling (or offering for sale) the goods or services protected, so even if such names are identical or confusingly similar, and also if they both applied to cover in protection the same or very similar goods or services, as far as such third party shows good faith; providing these benefits, unless the registered user evidences a documented prior first date of use with its filing date, or prior to the filing date if it was stated a first date of use, with a confirmation of such date therein with the application form.
10. – CAN SOMEONE WITH BONA FIDE INTENTIONS, AND UNDER CIRCUMSTANCES SHOWING GOOD FAITH, CANCEL A TRADEMARK REGISTRATION IN MEXICO BY DEMONSTRATING PREVIOUS USE IN COMMERCE?
Indeed, pursuant to Mexican IP Laws and Regulations, authorities shall grant the person that verifies a previous, substantially exclusive and continuous use in commerce of a trademark, the right to cancel a registration already obtained by a third party, if the following conditions are fulfilled:
a) The ‘used’ trademark has to be unmistakably similar, or identical, to the ‘registered’ trademark;
b) The ‘used’ trademark must have documented a prior first date of use, along with supportable evidence that may challenge the filing date, or stated first date of use, of the ‘registered’ trademark;
c) The ‘used’ trademark has to demonstrate continuous use;
d) The ‘used’ trademark has to be used under circumstances showing good faith and bona fide intentions;
e) The ‘used’ trademark must cover the same or similar goods or services covered by such other ‘registered’ trademark; and
f) The ‘used’ trademark must cover goods or services sold or provided within Mexican territory.