Article 151 of Mexico’s Industrial Property Law (Ley de Propiedad Industrial) establishes five causes for which one may request nullification of atrademark, provided a party has standing to obtain a nullity decision. Of the five causes, two are related to trademarks granted in violation of the law,and trademarks obtained by agents, representatives and distributors of a foreign trademark owner. Such causes may be filed at any time, which is to saythere is no time limit for filing a nullity action. However, the other three causes must be filed within a determined time limit and, if not filed in a timelyfashion, becomes barred by the applicable statute of limitations. Such three causes include: (i) nully of trademark by demonstrating first use in Mexico oroutside of Mexico of the same trademark (which action must be filed three years following publication of the trademark registered in Mexico’s officialgazette); (ii) when a trademark is obtained based on falsified data; and (iii) when a trademark is granted in error, inadvertently, or for lack ofunderstanding by the trademark authorities given the existence of an equal or similar trademark (which actions must be filed within five years followingpublication of the trademark in the official gazette). The above information is relevant because, on many occasions, improperly registered trademarks arenot detected by the interested party until after the applicable time period for filing a protest has run, which makes it important to periodically review themarketplace and available databases in order to detect potential trademark infringement that affect the holders of intellectual property rights in Mexico.
As noted in issue 56 of the CCN Mexico Report, as part of the 2008 National Regulation Program, Mexico’s Department of the Economy has reviewedthe potential elimination of close to 50% of currently existing Mexican Regulations (Normas), particularly those that could serve as a barrier to trade.Between August and today, the Department of the Economy has published around 26 notices on its procedural review cancelling more than 1,300Mexican Regulations, effective this year. The National Regulation Program provides for cancellation of close to 2,700 Mexican Regulations in total.Unlike Official Regulations, Mexican Regulations (Normas) are voluntary and must be followed only if an Official Regulation provides for obligatorycompliance. We suggest that our readers review such notices in order to verify if any of the Regulations they follow have been cancelled, which meanssuch Regulations do not apply, and remain inapplicable until new regulations have been enacted in their place. The notices cancelling such Regulationsand calling for public comment may be reviewed by consulting the August 14, 18, October 8 and October 9, 2008 editions of the Official Journal of theFederation (Diario Oficial de la Federación). If readers have questions about the applicability of Mexican Regulations they may contact the editors listedbelow.
On September 26, 2008 the rules for a Contest to identify the least useful government procedure were published in Mexico’s Official Journal of theFederation (Diario Oficial de la Federacion). At the request of President Felipe Calderon and the non-governmental organization TransparenciaMexicana, the contest seeks to determine and identify those federal, state and municipal governmental procedures that should be eliminated or revised inorder to better serve the general public, all within the framework of Mexico’s Procedural Improvement Program (Programa de Mejora de la Gestion). It ishoped that the contest will generate a broad-based response. In our view, this would also be a good opportunity to recognize the “Best Procedure”(Tramite Ejemplar) in order to balance the contest proposed by the government.
This past July the First Chamber of Mexico’s Supreme Court issued a decision contradicting prior judicial decisions holding that when a creditor sues forpartial or total breach of contract, such creditor may not simultaneously compel performance of the contract and payment of a contractual penalty clause,but must instead choose only one of the two remedies. The above was based on review of Article 88 of Mexico’s Commerce Code (Codigo deComercio), which does not distinguish between the types of breach, implying that such article covers both partial breach of contract, as well as totalbreach of contract, from which there is no gap in understanding, which means that article 1846 of the Federal Civil Code does not apply as asupplementary authority. As such, and in view of the terms of the Commerce Code, parties to a commercial agreement obligate themselves according tothe terms of the contract expressing their intent, making it even more important to clearly establish procedures for including penalty clauses for partialbreach of such contracts, independent of the possibility of suing for specific performance.