TO THE MEXICAN
INDUSTRIAL PROPERTY LAW
||On May 18, 2018, the decree was published in the Official Journal of the Federation to amend and include various provisions to the Mexican Industrial Property Law (“MIPL”).
The relevant points are the following:
1. The definition of Trademark is extended.
Article 88.- A trademark is understood to mean any sign perceptible by the senses and susceptible of being able to determine the clear and precise object of protection,
which distinguishes products or services from others of the same species or class on the market.
The above to provide protection to trademarks that were previously not covered by the MIPL, among which are:
- Holographic signs
- Sound trademarks
- Olfactory trademarks
- Figure of "Trade Dress"
“Plurality of operational elements, image elements, including, among others, the size, design, color, label layout, label, packaging, decoration and the rest, products or services in the market".
2. The "Secondary Meaning" is recognized.
Article 90. They will not be registrable as a trademark.
The provisions of sections I, II, III, IV, V and VI of this article shall not apply when the trademark has acquired, for the products or services for which it is requested, a distinctive character derived from the use that has been made on trade.
3. Inclusion of the figure "Bad Faith"
Article 90 ...
XXII.- The signs requested in bad faith. It is understood by bad faith, among other cases, when the registration is requested in a manner contrary to good practices,
customs and practices in the system of industrial property, commerce, or industry; or that it is intended to obtain an undue benefit or advantage to the detriment of its legitimate owner.
4. Certification Trademarks are incorporated.
Article 98.- A certification mark is understood as a sign that distinguishes products and services whose qualities or other characteristics have been certified by their owner...
5. Declaration of use in the first 3 years so as not to decree the expiration of a trademark.
Article 128 ...
The owner of a brand must declare before the Institute, accompanying the payment of the corresponding rate, the actual and effective use of the trademark.
Said declaration must be submitted during the following three months, counted from the third year after the registration was granted.
If the owner does not declare the use, the registration will expire as of right.
The reform will take effect on August 10, 2018.