Changes to Mexican Trademark Law

Published on July 6, 2018

Like Canada, Mexico is introducing some significant substantive and procedural changes to its trademark law. The changes are to align its practice with that of its foreign commercial partners and are expected to come into force 60 working days from the May 18, 2018 publication in the Mexican Federal Gazette. Among the changes are the following:

* Any natural or legal person can register a trademark. Previously, only industrialists, traders and service providers could do so.

* The definition of trademark is being changed to include any sign perceptible to the senses and capable of being graphically represented. This will allow the protection of non-traditional marks such as sounds, scents and holographic marks.

* Otherwise descriptive or non-distinctive marks may become registrable by proving secondary meaning or acquired distinctiveness.

* Refusals based on confusion can be overcome by obtaining a consent from the cited trademark owner, and co-existence agreements will be recognized.

* Trademark applications will have to identify specific products or services, as well as identify the date of first use of a mark in Mexico, if applicable. Broad descriptions and the use of class headings as descriptions will no longer be acceptable.

* The definition of “collective marks” is being broadened, and certification marks will now be registrable.

* There will now be a requirement to file a declaration of use within the first three months of the third year of registration. If the declaration is not filed, the registration will be cancelled. A declaration of use must also be filed when renewing a trademark registration.

* A trademark registration can be invalidated if it was obtained in bad faith.

* The term to file a nullity action to challenge a mark on the basis of confusion, false information in an application, or where the registration was granted in error, will be extended from three to five years.

* Oppositions will become more contentious in nature with the filing of evidence, a term to submit final pleadings, and the issuance of a final “resolution”. The “resolution” will be binding on examiners of the Trademark Office, who will have to issue decisions on the merits of the opposition.

Trademark owners with applications and registrations in Mexico are encouraged to contact counsel in Mexico to ensure that steps required under these new provisions are not overlooked. This is especially important for registrations approaching three years from registration or coming due for renewal. Further, trademark owners should follow up with Mexican counsel to discuss registrations that are beyond three years from registration to confirm whether Declaration requirements may be due upon, or soon after, the coming into force date.

Submitted by Arnold Ceballos (The Bank of Nova Scotia)
on behalf of the International Trademark Issues Committee.