On March 22, 2018, the Mexican Senate passed a bill that will substantially amend the provisions of the Industrial Property Law relating to trademarks, appellations of origin and geographical indications. The bill has already been passed by the Chamber of Deputies, and will be signed by the President shortly.
We will address the amendments relating to appellations of origin and geographical indications in another newsletter.
The principal changes relating to trademarks are summarized below:
1. “Any person” may register a mark (Article 87). The law previously stated that only “industrialists, traders and service providers” may apply for registration.
2. Marks need no longer be visible to be registered (Article 88). A mark need only be perceptible by the senses, and capable of being represented so that it is clear exactly what is being protected.
3. Some types of non-traditional marks that were previously denied protection will now be registrable, including sounds, scents, holograms and trade dress (Article 89).
4. Descriptive terms, terms in common use and nondistinctive trade dress previously ineligible for registration will now be registrable, based on distinctiveness acquired through use (Article 90).
5. Applicants may now overcome a refusal based on confusing similarity by obtaining the express consent of the prior trademark owner (Article 90).
6. The provisions relating to collective marks have been expanded and clarified (Articles 96-97 bis 1).
7. Certification marks will now be registrable (Articles 98-98 bis 4).
8. Applications for registration must now identify “specific” products or services (Article 113).
9. The provisions governing trademark oppositions have been modified (Articles 120-125). Among other things, the amendments require the Mexican Institute of Industrial Property (IMPI) to suspend an application after the filing of an opposition, and to issue a decision on the merits in each case. Previously, the filing of an opposition did not result in suspension, and the examiner was required to issue a decision only if the opposition was sustained.
10. Registrants must now file a declaration of continued use during the three months preceding the third anniversary of the registration date (Article 128). The registration will lapse automatically if the declaration is not filed.
11. A trademark registration may be declared invalid if it was “obtained in bad faith” (Article 151.VI).
After signature by the President, the amendments will be published in the Official Gazette of the Federation. The amendments will become effective 60 days after publication.
Source: Arochi & Lindner
