The CCN Mexico Report™ is now available in audio format. Listen to the podcast and follow us on Spotify or wherever you get your podcasts.
As is the case with many intellectual property laws around the world, Mexico’s Intellectual Property Law (Ley de la PropiedadIndustrial) establishes in article 90 a list of names, figures or three-dimensional forms that may not be registered, as is the case withtrademarks that are similar or previously registered or applied for, including those that reproduce or imitate shields, flags, official seals orsigns and guarantees, geographic names and maps, when such signs indicate the origin of the products or services covered, and whichgenerate confusion or possible error. There are 17 different bases for finding a distinctive sign to be ineligible for registration. Two ofthese legal provisions stand out given the frequency that the ineligibility of marks occurs. The first case is when the “names, figures orthree-dimensional forms, considered together with their characteristics, are merely descriptive of the products or services that the markwould be protected under. Included in this category as descriptive or indicative words that designate the kind, quality, quantity,composition, destination, value, place of origin or time of production of the products, which may not be registered.” This prohibitionapplies at all times given that there are many cases where parties seek to register trademarks and, allegedly to improve marketpenetration, but the law does not allow such names, figures or forms describing a product or service to be granted exclusive use.However, there is no legal provision prohibiting the registration of so-called “evocative marks,” which without describing the product orservice to be covered, nor using the term, form or usual designation, suggest characteristics of the products or services. In this case, eventhough it is not valid to provide a direct description in the trademark application, one may evoke or suggest the idea of a product orservice. The second case is when parties seek to get around the prohibition on merely descriptive trademarks in languages other thanSpanish, or cleverly change the spelling of names to be registered, and all of these causes are sufficient to allow Mexican authorities toreject registration of the proposed mark.
On August 19, 2010, the National Commission for the Protection and Defense of Financial Services Users (CONDUSEF) published newregulations applicable to financial and lending institutions in regard to the requirements that form adhesion contracts must include, alongwith account statements, transaction receipts, commissions and the form and terms of advertising financial services and transactions,among others. The new provisions establish detailed information on the requirements that must be included in such items, including thepurpose of the transaction, the parties, commissions, interest, term and other specific data. Similarly, the regulations detail requirementsthat account statements issued by financial statements must include when sent to their customers. The regulations enable CONDUSEF tohalt advertising and publicity campaigns of such financial institutions if found to be in violation of the law. Financial institutions willhave 120 days following publication of the new regulations to amend their form agreements, advertising and publicity, accountstatements and transactional receipts. It is recommended that financial institutions review these new provisions, not only to ensurecompliance, but also to provide better customer service.
Recently, the Second Chamber of Mexico’s Supreme Court of Justice (Suprema Corte de Justicia de la Nación or SCJN) issued adecision under the heading “Parties contracting for contract labor for services. Article 15 of the Social Security Law, augmented by theDecree published in the Official Journal of the Federation on July 9, 2009 deciding that parties benefiting from such services have thefull responsibility to comply with Social Security obligations and is constitutional.” In its holding, the SCJN stated that Mexico’s FederalCongress “did not overstep its authority to enact legal provisions in labor matters” as provided in the Political Constitution of the UnitedMexican States, nor is it irrational taking into consideration the guaranties contained in Article 15 of the Social Security Law. Suchprovision establishes full liability on the part of the beneficiary of services when a specialized services provider (outsourcing) deliverssuch services. This is designed to protect and promote the well-being of employees and their families so that such workers are not leftwithout coverage, it being the responsibility of the party benefiting from such work or services, who is in the best position, as asupervisor and employer, to oversee the work, work hours, operations and other administrative functions. In this regard, Mexico’s highestcourt has determined that the beneficiary of work or services may be held fully responsible for complying with Social Securityobligations, notwithstanding the fact that such work has been outsourced to a third party to pay salaries, provide raw materials, worktools, etc. The full liability provision is not absolute in regard to all labor obligations, as Mexico’s Social Security Law establishes that aparty benefiting from such services, in case it makes payment of the due and owing benefits, has the right to pursue reimbursement fromthe third party services company. This case decision is pending publication in the Judicial Weekly of the Federation, and is a soledecision not constituting binding jurisprudence and not a decision which has general application.
