Intellectual Property Articles


Recent Amendments to Mexico’s Industrial Property Law

By Antonio Campero

2018 saw two major amendments to Mexico’s Industrial Property Law. The first amendment was enacted on March 13, 2018, while the second amendment followed on May 18, 2018. The following are the most relevant changes enacted in the March 2018 amendment: The definition of “Industrial Designs” was changed, and the validity of an Industrial Design registration was increased to 25 years. Prohibited trademarks were added. Regulations regarding “Protected Geographical Indications” were strengthened and the definition of “Appellations of Origin” was changed; a new chapter was added to regulate the procedure to register both. Regulations relating to Protected Geographical Indications and Appellations of Origin from foreign countries were also added. Additional cases of infringement were included. Production, storage, transportation, distribution or … read more


Recent Jurisprudence – Burden of Proof When the Date of First Use of a Trademark is Allegedly Falsified, by Adrian Salgado

The First Circuit on Administrative Matters recently issued opinion number PC.I.A. J/78 A (10a.), entitled: “Invalidation of Trademark Registration. When the date of first use of a mark is allegedly falsified, the plaintiff bears the burden of proof to prove the facts of the elements of the cause of action.” In such case, the court determined that when one alleges the invalidation of the registration of a trademark, in accordance with that set forth in section III of Article 151 of the Intellectual Property Law, based on the alleged falsification of the date of first use of the mark stated on the application for registration, the plaintiff bears the burden of proof to prove its case.  This conclusion is consistent … read more


Recent Jurisprudence – Expiration of Mexican Trademark Registrations

By Adrian Salgado

Recently, the First Collegiate Court on Administrative Matters of the First Circuit approved legal opinion number I.1o.A.79 A (10a.) entitled: “Expiration of trademark registrations. The use of a trademark by an authorized third party, other than the owner, is sufficient to avoid its expiration.” In its opinion the Court determined that the relevant aspect to be considered in verifying the expiration of a trademark is its actual use for marketing of products, or for the rendering of services that are distinguished by such mark and, that said use by a third party other than the owner serves to preserve the effectiveness of the trademark and avoid its expiration, in accordance with the concept of mandatory use of the registered trademark under … read more


Intellectual Property Notes – Comparative Advertising of Trademarks

By Antonio Campero

Comparative advertising is a tool used in many countries to highlight the benefits of products recognized by the general public by means of the trademark indicated thereon, so that potential consumers can have additional information in order to make an informed decision regarding the purchase of advertised products. In Mexico, comparative advertising occurs in only rare cases, because including trademarks belonging to third parties in one’s own advertising is often considered an infringement that can give rise to penalties from Mexico’s IP authorities, based on the fact that current legislation on this issue establishes that no one “shall disparage or attempt to do so with respect to the products, services, industrial or commercial activities or the establishment of another,” and, … read more


Recommendations for the Use and Preservation of Registered Trademarks

By Antonio Campero

In Mexico, as in the rest of the world, trademarks that are duly registered may be enforced against third parties who attempt to utilize or copy them. Nonetheless, it is advisable to take certain measures with respect to their use and proper maintenance, including the following recommendations: Ensure that the marks are always used in the manner in which they were registered. Many times the design of a trademark evolves over time, which means that while the mark continues to maintain similar elements, it has been modernized in such a manner that it can no longer be considered the same trademark that was previously registered. In this case, the rights pertaining to such trademark may be lost for failure to … read more


When Should a Copyright on an Authorial Work Be Registered?

By Antonio Campero

In order to claim exclusive rights regarding a symbol or invention, whether a brand, advertisement, patent or industrial design, prior issuance of a registration certificate from the corresponding government office, such as the Mexican Institute of Industrial Property (IMPI), is required. Such registration is a formal and somewhat complex procedure. By contrast, a copyright on a work is automatically legally protected because copyright protection exists from the moment the work is created. Also, the creator of such work has the option of registering such creative work with the Mexican National Copyright Institute. Such copyright registration is simply to confirm copyright protection; however, by no means is registration required in order for the corresponding rights to be enforceable. At times, it … read more


Patent and Invention Searches

By Antonio Campero

Registered patents and inventions represent the technological status of a sector or country. Today, nearly all industrialized countries have electronic databases run by their government operated patent and trademark offices, which include inventions that have been registered and that are currently being used, or which will soon be used in commerce. As a result, it is relevant, though infrequent, for companies to consider searching various databases run by the governmental patent and trademark offices (meaning registered inventions or those whose registration is under way and have been published), in order to become aware of the technological tendencies within their sector. Failure to do so means potentially losing out on a great opportunity to initiate investigations based on the results obtained … read more


Madrid Protocol

By Antonio Campero

In April 2012, the Mexican Senate approved Mexico’s accession to the Madrid Agreement for the International Registration of Trademarks, known as the Madrid Protocol. While this may be seen as a step toward improved harmonization of our international trademark system, the inclusion of Mexico in this agreement also has disadvantages, given being that our current legislation is not compatible with the laws of most of the countries that form part of this agreement. Examples of this include: that the trademark registration process in Mexico does not provide for what is known as a “period for opposition” that most participating countries have; that in Mexico each trademark application may request the protection of products or services in one class (in accordance … read more


Trademarks and the Internet

By Antonio Campero

The Internet has become the most sought after means of all communication media, or at least the medium that allows immediate access to the content of products and ideas on a global scale. Today, it is common for products and services to be offered to a vast array of countries and regions. As far as trademarks are concerned, once such are displayed on the Internet, they are available to anyone, which may result in the following consequences, among others: i) the imminent risk that the trademark may not only be imitated or reproduced in other countries, but also registered by third parties; and ii) the additional risk that anyone who advertises through the Internet (and therefore on a global scale) … read more


How to Choose a Trademark

By Antonio Campero

An important decision for companies is choosing the distinctive trademarks that will identify their products or services in the future, given that, to a great extent, this decision will be fundamental for the future success of the business. Once factors such as price and quality are linked to a product or service in the consumer’s mind, trademark identification becomes critical. As a result, it is vital to make a proper trademark selection prior to the introduction of the product or service into the market, pursuant to which certain factors must be taken into consideration, such as the ease of imitation due to the word(s) or designs chosen, the ease of maintaining the name(s) or images, etc. Given the foregoing, one should … read more