|
 |
| NEWSLETTERS |
| Newsletter |
| |
| Intellectual Property
|
| |
 |
Amendments to Mexican Intellectual Property Law
August 01, 2018 |
|
| Amendments to Mexican Intellectual Property Law |
|
|
On May 18, 2018 was published on the Official Gazette amendments to the Mexican Intellectual Property Law, that would be into force after august 10, 2018. Due to the recent international commitments confirmed by Mexico as the CPTPP. We highlight the modification to the legal concept of “trademark”, the modification to the rules of trademark registry proceeding, including the new concept of bad faith in TM use, the legal protection of the concept “Trade Dress” and the certification marks.
The new registry proceeding of TM in Mexico now includes: a
real binding opposition process, declaration of real and
effective use of TM (on year three of registration date and for
renovation process), modifications on collective marks, and
changes on well-known TM.
According to new regulations, all the TM will be now defined as “any sign perceptible by senses” and the limited old concept of “visible sign” will vanish. In this regard, the TM now expressly includes holograms, odors, sounds and color combinations, also by interpretation could include the protection of flavors and texture. Is important to highlight that any person could obtain the protection of TM, not only business man, as it was limited in the wording of the current Intellectual Property Law sections.
The most important requirement in order to obtain the TM exclusive rights, is to be requested in a manner that permit to determinate precisely the object of protection. This will imply a change on the formats and change of mind in criteria of the TM examiners.
Notwithstanding, the TM will meet his principal function of distinguish goods and services from others in commerce of the same class or species, in other words, to avoid confusion, mistake or deceive. Particularly, for non-traditional TM the description of goods and services must be very accurate to avoid descriptiveness. For example, a smelling TM must not be granted for perfumes.
Is important to highlight that the amendments of the Intellectual Property Law include new exceptions to the TM registry, as it incorporates more sections to article 90, to not allow the registry of the following:
a. Public domain Holograms
b. Transliteration of non-registrable TM;
c. The image, voice, portrait and signature of persons, without his consent, or in case of deceases persons, without the consent of successors
d. Identical or same signs that cause confusion with artworks
e. Copy of artworks, without authorization
f. Any sign that can cause confusion, mistake or deceive, as false indications of nature, parts, qualities or origin of good or services
g. The name of a person identical to another previously registered
h. References to plant varieties or animal races that cause confusion with the goods or services protected by the TM
i. Those requested in bad faith. It means, all the TM far from good practices on the IP system, commerce or industry, or those that pretend to obtain a profit of advantage non- justified against the true owner of the IP right.
Notwithstanding these exceptions, the TM registry panorama seems to increase the coexistence, due to the possibility to celebrate coexistence agreements, particularly in case of Name of persons or identical signs or in case of transfer of connected TM.
Regarding the new figures of protection of IP, we highlight the following: 1) Trade Dress, that is the plurality of image aspects including the size, design, color, shape, tag, décor, pack, that ensemble could distinguish goods and services in commerce; and 2) Certification TM understood as signs that distinguish goods and services and the quality has certified by the holder of the TM. For a Certification TM registry process is necessary to present the conditions of use. The Certification TM cannot be licensed and should indicate that are “Registered Certification Trademark”.
At last, but at least, is important to highlight that the infraction causes have been amended as well accordingly with some exception causes for TM registry, for example:
a. Copy or imitation of official signs without authorization
b. Copy or imitation of State official´s signs for control and guarantee
c. Copy or imitation of decorations, medals, awards and prizes official recognized
d. Names of private property without the consent of its owner
e. Name, last name or pseudonyms of famous persons
f. Signs that cause confusion or deceive
g. Copy or imitation of well-known or famous TM
h. Use the name of a person for goods or services identical to those protected by a previously registered TM.
|
|
|
|
|
| J. Rafael Amador Espinosa |
|
|
|
|
|
|
|
|
|
|
|
|
IMPORTANT: The information here contained is of general nature and for informative purposes only. Please consider that what is here stated does not apply circumstances of any individual or entity. We strongly recommend not performing any activity based on this information without the professional assistance of our lawyers considering your particular circumstances.
|
|
|
|
Our Propiedad Intelectual Practice Team can gladly support you in the following topics:
|
Invention and Trademark protection
Franchising Agreements
Trade Secret protection
Intellectual Property Due Diligence
Information governance and privacy
|
Copyright protection
Consults regarding Appellation of Origin
Drafting and negotiating Agreements on matters related to Intellectual
Property Law, among others
|
| << Back |
|
Archivo PDF |
|
|
