Trade Marks 2022 Comparisons

The applicable statue governing trade marks is the Federal Law for the Protection of Industrial Property. Further, Mexico is party to:

• the Paris Convention for the Protection of Industrial Property;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• TRIPS; and
• the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.

Treaties

Mexico is also party to several treaties regarding free trade that also contain relevant trade mark provisions, notably the United States–Mexico–Canada Agreement (USMCA).

As per the legal system of Mexico, treaties signed by Mexico and ratified by its senate enter into force automatically and all authorities of the Mexican government are constrained to follow them. International treaties executed in this way, as all mentioned herein are, will normally prevail over any national legislation to the contrary.

Courts, Regulations and Administrative Dispositions

In Mexico federal judges from the Federal Court of Administrative Justice, the Federal Circuit Courts and the Supreme Court of Mexico are allowed to interpret the legal provisions regarding trade marks when deciding the cases before them. Typically, these criteria can become binding if reiterated a certain number of times or as a result of resolving a dispute over contradictory criteria.

Finally, there are a number of regulations and administrative dispositions regarding matters such as official forms, notices, the use of electronic means, etc.

Under Article 171 of the Federal Law for the Protection of Industrial Property any sign that is perceptible through the senses and that can be represented in a way that allows to determine the object of protection in a clear and precise way. Article 172 of the same law further clarifies that the following can constitute trade marks:

• words, letters, numbers (word marks);
• designs and combinations of colours and shapes (design marks);
• three dimensional shapes, including for example the shape of a product or its packaging, provided that they are distinctive, meaning they will not register if they are the usual shape of the product or one imposed by functionality or the nature of the product;
• sounds;
• scents;
• a plurality of operational or image elements (trade dress); and
• any combination thereof.

The process is the same for registering any of these marks, what can change is the required information and documents for each kind of mark. For example, for sound marks it is necessary to provide the digital file containing the sound.

In addition to a regular trade mark registration, the law in Mexico also recognises collective and certification trade marks.

Collective Trade Marks

A collective trade mark registration may be requested by associations or societies of producers of products, merchants, manufacturers or service providers to identify their good and services. The society or association must be lawfully incorporated and the products or services to be identified must have a distinguishing quality or characteristic in respect to those of non-members.

The application will need to contain rules for its use and the mechanisms to enforce those rules, as well as provisions regarding the characteristics of the products or services, their processes, packaging, etc. A collective trade mark can never be licensed or assigned, its use is reserved to the members of the association or society indicated in the registry.

Certification Marks

A certification mark may be used to certify the components, geographical origin, conditions of manufacture, quality, processes and other characteristic of a product or service. However, these can only be registered by a duly incorporated legal entity that is dedicated to certifying the respective characteristic and which is not involved in providing the goods or services subject to the certification. To register, the application will need to indicate the characteristics to be certified and the respective methods, regulations, standards, etc, to determine compliance.

The certification mark cannot be licensed, but its holder is constrained to authorise its use to anyone who demonstrates compliance with the certification criteria in the registry. Undue or discriminatory failure to authorise the use of a certification mark can result in its cancellation.

Mexico only grants an enforceable right of exclusive use over a trade mark through registration in most cases, though very narrow exceptions can apply.

Famous Marks

Trade marks that are known to the public to a certain degree can be considered as either well-known or famous. A trade mark that is known to commercial circles or consumers of the respective goods or services as a result of commercial activities can be considered or declared as well-known. A trade mark that is known to a majority of consumers in Mexico or which has a presence or recognition in global trade can be considered or declared famous. These marks can enjoy certain protection even while unregistered. For example, they may block the registration of similar marks even if there are no pending applications or registration for them in Mexico.

Trade Names and Slogans

The law also recognises protection over two legal concepts that are very similar to trade marks that are worth mentioning, namely trade names and slogans. A trade name is the name of an industrial, commercial or services establishment or company. These are protected even without registration, but only in the geographical area of the clientele of the establishment or company.

A trade name can be published in the Industrial Property Gazette to create a rebuttable presumption of good faith in its use and adoption, which lasts ten years and can be renewed. The application to publish must include evidence of the use of the trade name. The assignment of the establishment identified by the trade name will include the assignment of the trade name itself unless the parties agree to the contrary.

Slogans are phrases used to advertise goods, services or establishments. They can be registered in a manner similar to a trade mark to obtain a right of exclusive use that also lasts ten years and can be renewed.

All of these marks and related legal figures are regulated by statute.

Prohibitions apply for the registration of the titles of copyrighted works and elements (ie, characters) contained therein and they cannot register without authorisation from the respective author.

The unauthorised registration of flags, coats of arms, hymns or emblems from any country or its political divisions is forbidden. Similar prohibitions apply in respect to international organisations, NGOs and similar organisations recognised by the government of Mexico, and further apply to the copying or imitation of the names, signs or awards issued at expositions, fairs and other sporting or cultural events with the official recognition of Mexico, such as the Olympic Games or the FIFA World Cup.

Regardless, as per international treaties other specific prohibitions can apply, for instance in respect to signs such as those of the Red Cross or the Olympic Games.

Trade Mark Register

There is one single register in Mexico for trade marks. However, in addition to trade marks, the law also permits the registration of slogans (phrases used to advertise products, services or establishments) and the publication of trade names (the name by which an establishment is known) and these rights can also be searched on the registry of the Mexican Institute of Industrial Property and on the Industrial Property Gazette.

Searches

Searches are very commonly performed to determine the availability for registration of a trade mark and are usually conducted before filing for registration. Since under most circumstances, unregistered trade marks are not relevant for registration, a search will typically only consider the trade marks on the registry and searching the sites indicated above (and sometimes the Madrid Monitor) is usually enough to determine if the mark can register.

A famous trade mark is one that has achieved recognition in global trade and registration of a trade mark application in Mexico to a third party could be validly refused on such basis. Yet, evidence would need to be provided such as press books, websites and metrics, a global presence through stores and sales, etc.

The names of individuals, pseudonyms, last names, etc, that have such public recognition or fame that there is a risk of association cannot be registered without authorisation. For instance, eg, the names or pseudonyms of famous artists or sports players.

The term of protection is ten years from registration, subject to declaring use on the third year from the issuance of registration. It is renewable for equal periods of time, subject to declaring use.

Once trade marked goods are lawfully entered into commerce by the trade mark owner or its licensee, trade mark rights are exhausted and anyone is free to re-sell, distribute or use the trade marked product and the trade mark owner cannot claim infringement from such activities. Mexico allows parallel imports and the trade mark owner cannot claim trade mark infringement from the import of authentic trade marked products by third parties.

There are no common-law rights in Mexico and, in most circumstances, only registration will confer a right of exclusive use. Once registered the trade mark owner should use the “®” symbol, the expression “marca registrada”, the initials “M.R.” or otherwise inform the public that the mark is registered. Falsely claiming such can result in a fine.

The law provides that claims for damages or criminal liability for trade mark infringement, as well as preliminary injunctions, will only proceed if it is shown that the trade mark owner indicated that the trade mark is registered.

The law does not foresee a specific procedure or requirement for assigning a trade mark. A written assignment identifying the trade marks and their respective application or registration numbers is enough. No notarisation or apostille is needed.

Recording assignment is necessary for the assignment to have effect against third parties and so that the new owner can exercise the rights over the trade mark. If preceding changes in ownership were not recorded, they must be made simultaneously at the time that the new change in ownership is recorded.

When the recording of the assignment of a trade mark registration is requested, the assignment of all confusingly similar marks that the assignor owns must be requested as well. Assignments cannot be used to leave registrations for confusingly similar marks in the name of different owners unless there is consent and the Trademark Office considers that consumers will not be confused.

A trade mark application or registration can also be disposed of as any other asset, they can be used to secure a contractual obligation, they can be assigned through a will, they can be put into a trust, etc. The respective document must be recorded in order to have effect against third parties.

The law does not impose any restriction other than those of other contracts. A licence can be exclusive or non-exclusive, for a fixed time or an indefinite time, and cover some or all the goods or services covered by the registration or application. A licence must be recorded in order to have effect against third parties and it can only be recorded if made in writing. An assignee that takes a registration with a recorded licence will take it subject to the license. No apostille or notarisation is required.

A perpetual licence can be valid and binding. Once a licence is recorded, its recording can only be cancelled with the joint request of licensor and licensee or through a judicial order.

A licensee can, absent a provision to the contrary in the agreement, take legal action to defend a trade mark registration.

An assignment is valid between the parties from the moment a contract is formed under the laws of the place where the assignment takes place.

If the license or assignment is not recorded then it will not have effect against third parties. Creditors and other assignees/licensees are not bound by an unrecorded agreement, ie, a bona fide creditor may lawfully sequester or seize the assigned registration despite the opposition from the unrecorded assignee. An unrecorded assignee/licensee may also face substantial difficulties for defending the mark, eg, a plaintiff to a cancellation proceeding regarding a trade mark registration is only constrained to give notice to the recorded owner of the registration.

For an unrecorded licensee, a bona fide assignee that records his assignment before the license is recorded could take it free of the licence.

The laws of Mexico do not require the assignment of goodwill along with the mark. The assignor would normally have to assign all other registrations for confusingly similar marks that the assignor owns in order to record the assignment.

An application may be assigned or licensed, regardless of the basis for the application. The right of exclusive use over the mark will not arise until it registers.

A trade mark may secure a contractual obligation. The respective agreement must be recorded for the creditor to have their rights enforced against third parties. Where a security is recorded, any assignee will take the registration subject to the recording and the creditor may take the registration as prescribed in the agreement from the assignee in the event of default.

A judge or other government authority may validly seize, sequester or levy in execution a trade mark registration. For instance, it is not uncommon for the tax authorities to seize a trade mark registration for owed taxes.

An enforceable right of exclusive use over a trade mark will normally only arise through registration in Mexico. Use alone, even for substantial periods of time will not be a valid basis to perform initiate a trade mark infringement claim.

For famous or well-known marks there is protection even without registration, though proving this may demand a substantial volume of evidence.

There is one trademark register which is publicly available. It is common to conduct searches, since in Mexico typically only pending applications or registered trade marks are relevant for determining the availability of a trade mark.

The term of registration is ten years counted from date of registration, renewable for ten-year periods. There is no limit on these. A grace period of six months is allowed to file for renewal after the ten years have passed. To renew, the owner must declare under oath that the mark is in use in Mexico and indicate the products or services in which the mark is used. Protection over unused products or services will be lost.

The trade mark itself can never be altered in the registry and any alterations or new marks will be subject to a new registration. This said, the law can allow slight discrepancies between the trade mark in the registry and the trade mark as used in commerce.

The products or services covered by the registration can be limited at any time, but they can never be expanded, every new product or service not initially covered will be subject to a new registration.

In general, the applicant must submit the respective application form, either physically or electronically with at least the following:

• the name and domicile of the applicant;
• the trade mark;
• for trade marks composed of sounds, scents, holograms and trade dresses, a description of the mark needs to be provided;
• if use is claimed, a date of first use and the address of the premises where the mark has been used must be provided;
• if a Paris Convention priority is claimed, the serial number, filing date and office must be indicated; no copies of the foreign filing are required; and
• for sounds, the digital file containing the sound must be included. For scents, the product in which the mark will be used may be included.

In addition, the applicant may submit other documents such as letters of consent or proof that the mark has acquired a distinctive character. Any legally existing individual or entity can register a trade mark.

If the mark is filed in co-ownership, rules of use signed by the co-owners must be submitted as well. A power of attorney is not normally required to file the application itself, but it can become necessary later on.

There are benefits to claiming use when filing an application. If the application registers third parties trying to assert prior use to cancel the registration will need to prove that their use precedes not only the filing date of the application, but also the claimed date of first use. Similarly, a third party trying to assert prior use as a defence to trade mark infringement will need to prove that the use precedes the claimed date of first use.

However, misrepresenting the date of first use claimed in a trade mark application can result in the cancellation of the respective registration, if challenged.

Series marks do not have a specific form of protection. They could potentially be protected in the form of holographic trade marks if they include holographic elements. The law allows the use of trade marks with slight modifications, therefore, the utility of registering series marks is debatable.

The examiner can raise the citation of prior marks ex officio. The examiner may raise objections based on confusion with the name or pseudonym of a famous individual and other prohibitions of the law. Even when there are no oppositions, examiners often cite prior trade marks.

A consent will normally suffice to overcome a citation of a prior mark if the marks are not identical. An assignment/assignment back will not normally work because the law of Mexico forbids recording assignments if the examiner considers that consumers could suffer confusion.

Once filed, applications are published in the Industrial Property Gazette within ten business days of filing. Once the publication takes place, any interested third party may oppose the application within the term of one month.

The law does not delimit the filing of opposition to a specific prohibition or require a specific legal standing. Anyone who considers themselves affected by the application and that it incurs in any of the prohibitions of the law can oppose. It is not uncommon for artists to oppose without a registration against trade marks that they believe imitate their names or stage names.

The examiner in charge of the application will communicate the opposition to the applicant along with any formal or substantial objections that the examiner may have. The applicant will have approximately four months to reply, file closing arguments and then the examiner will decide the case and inform the opponent accordingly.

Unlike other jurisdictions, in Mexico, oppositions do not bind the examiner nor do they interrupt the examination process. The examiner may grant registration when an opposition is filed and may deny it when there are no oppositions.

The products or services covered can be limited or clarified but not changed or expanded, in which case the application may lose its filing date. Changing the trade mark is not allowed, but the examiner can ex officio request that the applicant clarify if a specific element of the mark is claimed or disclaimed or make corrections in the word elements. Otherwise, an application cannot normally be changed during the application process.

There are no multi-class applications in Mexico.

For correcting errors in ownership, spelling, etc, the applicant will normally have to re-file the application. For the date of first use, misrepresenting a date of first use can result in the cancellation of the registration.

The examiner can deny registration on both absolute or relative grounds. Before doing so, however, the examiner has to give notice to the applicant of such motives and provide the applicant with a term of approximately four months to reply.

For absolute grounds, such as a descriptive character, the law does recognise acquired distinctiveness and the applicant can try to overcome the objection by filing evidence that shows that the mark has been used and acquired a distinctive character, for instance, by showing that the products bearing the mark have been sold in Mexico and elsewhere in high volumes, that they are widely spoken about in the internet or social media, by showing that they are widely advertised, etc. For relative grounds, a consent can suffice for overcoming a citation or, alternatively, the applicant may consider challenging any prior mark cited by the examiner, in which case the application process.

Registration Prohibitions

The prohibitions for registering trade marks can be summarised as follows.

• Trade marks that are contrary to public order, typically those trade marks that consist of insults, promotion of illicit activities (ie, slang words for illegal drugs, nicknames of well-known drug dealers), etc.
• Trade marks that are not distinctive, including generic terms, descriptive trade marks, three-dimensional shapes and holograms that are in the public domain, isolated letters, digits or colours – the law recognises that a distinctive character can be acquired through use.
• Deceptive trade marks, including trade marks that include false indications as to the nature, components, quality or company origin of the products to be protected.
• Marks that include or imitate geographical indications, maps, appellations of origin and other signs that may falsely indicate the geographic origin of a product or service or marks that reference animal races and plant varieties if they may provoke confusion.
• Trade marks that reproduce or imitate coats of arms, flags or emblems of any country or its political divisions, as well as the names, abbreviations, emblems or any other symbol of international treaties, government organisations, any officially recognised organisation, coinage, bills, official means of payment, official seals or control or warranty signs adopted by any state.
• Trade marks that without authorisation reproduce the names, pseudonyms, last names or otherwise reference persons that are known enough so that the mark may provoke confusion.
• Trade marks that reproduce the names of places of places of private property that are identifiable and known for the production of products or services, without the consent from the owner.
• The titles or contents of copyrighted works, when they are so known that there is a risk consumers could believe there is an association with the work – the same prohibition applies to the registration of trade marks that reproduce or imitate characters, unless the applicant is the copyright holder.
• Trade marks filed in bad faith, ie, filed against good customs and practices or with the purpose of obtaining an improper advantage in detriment of the rightful owner of the trade mark.
• Trade marks that are non-registrable through other hypothesis of the law, even if translated into other languages, transliterated or misspelled. For instance, the prohibitions on descriptive trade marks will apply even if the trade mark is in languages other than Spanish.
• Trade marks that run afoul of any other legal prohibition, often in respect to certain matters such as consumer protection, alcoholic beverages, tobacco, medicines, etc.

There are two remedies against the Trademark Office that are not mutually exclusive.

Requesting a Review

The applicant may file a motion to request that the examiner’s hierarchical superior reviews the case and decide on the legality of a refusal. This is a relatively quick remedy and the applicant can expect to have a decision in less than a year, yet, because it would imply admitting fault and because they belong to the same government body it is difficult to reverse a refusal, especially on a complex case.

However, when the examiner makes an evident mistake it is certainly an option worth considering. If the outcome is not favourable the applicant can still appeal.

Appealing to the Federal Court

The applicant can file an appeal with the Federal Court of Administrative Justice. The proceeding starts with the filing of the appeal and both the Trademark Office and the owner of any cited mark mentioned in the refusal are served with process and allowed to intervene. Once they have replied or the deadline to do so elapses, the court will give all parties ten days to file closing arguments and then the decision of the case will be issued.

The proceeding takes around a year, the losing party(ies) can try to request the review from the Federal Circuit Courts which normally is the last instance. In very few cases involving issues pertaining to human rights, constitutional issues, etc, the review of the Supreme Court of Mexico may be sought but this is extremely rare.

Mexico participates in this system and there are five issues of concern:

• each class is prosecuted independently because Mexico does not allow multi-class applications – if a provisional refusal issued by Mexico is partial and pertains only to certain classes, the other classes will register;
• for a renewal of an international registration to have effects in Mexico, use needs to be declared in Mexico within three months of WIPO’s notice of the renewal;
• for international registrations designating Mexico where an address has not been designated, there is the risk that a plaintiff seeking to cancel the registration in Mexico would be able to serve notice of the cancellation through a newspaper;
• Mexico will not allow the recording of licences through the Madrid System; and
• use must be declared within the third month of the third year from registering in Mexico to maintain the registration.

The opposition needs to be filed within one month of the publishing of the application on the Industrial Property Gazette. No extensions are available. If the opposition is filed out of time it will be dismissed, the examiner is still supposed to examine the application and may still refuse registration.

Any prohibition to register is a valid basis to oppose. Thus, an opposition may be validly attempted on any of the prohibitions indicated by the law, including both absolute and relative grounds.

While Mexico recognises the dilution of trade marks, it does not work the same way as in other jurisdictions. In Mexico, a trade mark composed of a diluted word plus another relevant term can typically register if the other relevant term is different enough from the other trade marks in the registry. A trade mark composed exclusively of a diluted term cannot typically register and the courts and examiners will typically require another word to register. Thus, an applicant could try to argue that the common term with the opponent’s mark is diluted, whereas the opponent could try to argue otherwise.

Another relevant aspect is that examiners are not bound to grant or refuse registration just on account of dilution, they are supposed to examine the trade mark as a whole, holistically, and they may divert from preceding cases if they believe there are grounds to justify it such as protecting consumers from confusion.

Anyone who believes their rights are affected and that the mark should not register may oppose. A law degree is not necessary to oppose but the assistance of legal counsel is certainly advisable. The Mexican Trademark Office charges around USD260 per opposition. An attorney’s fees can vary but they can be of around USD600-1,000 depending on the complexity of the case. An opponent does not need a trade mark registration or application to oppose.

Once the opposition is filed, the examiner will communicate it along with any substantial or formal objections. The applicant will have around four months to reply. If they do, both the applicants and all opponents will be given five days to file closing arguments and the case will be decided.

There is no discovery: both the applicant and the opponent need to offer and submit any and all evidence that may help their case in the opposition and reply thereof. There are typically no hearings, and the case would be solved in writing.

There are two remedies against decisions that are not mutually exclusive, see 4.10 Remedies against the Trade Mark Office.

For cancellations based on prior use, a prior registration that should have been used to refuse the application, or claims that the date of first use is false, there is a statute of limitations of five years from the publishing of the registration in the Industrial Property Gazette. For claims that the registration breached other provisions of the law unrelated to a prior registrations (ie, descriptive or deceptive marks), or claims that mark was registered in bad faith, there is no statute of limitations and the registration can be challenged at any time.

For claims of lack of use, it is only possible to attempt them after the third year from the issuance of registration.

The reasons and remedies for revocation/cancellation of marks are as follows.

• Registration breached any provision of the applicable law other than likelihood of confusion with a prior registered mark at the moment of its issuance (no statute of limitations).
• Prior use of an identical or confusingly similar mark for identical or similar goods and services. Mexico recognises prior use in other countries and, thus, even if the mark is unused in Mexico, this can be an option if it is used in other countries.
• A false date of first use claimed in the challenged registration, with the owner of the registration having the duty of producing enough evidence to prove its accuracy.
• The registration was granted by error, inadvertence or a difference in opinion, and should have been refused on account of a prior registration.
• The registration was done by an agent, representative, user, distributor or other party related directly or indirectly with the owner of a foreign trade mark without knowledge and is identical or confusingly similar to the foreign mark.
• The registration was obtained in bad faith – on which there is no statute of limitations – such as registrations obtained by squatters to request consideration in exchange for an assignment or to pass-off as a famous foreign trade mark or other improper purposes.
• Cancellation for lack of use of any registered trade mark that has not been used for three consecutive years since registration.
• Cancellation for loss of distinctive character.

The cancellation of a trade mark registration may be initiated by the Mexican Trademark Office ex officio or by anyone with legal standing. Legal standing implies that the plaintiff must be directly affected in their legal rights by the registration challenged. Typically, legal standing will arise if the plaintiff is trying to register a trade mark and is blocked from doing so by the challenged registration or if the challenged registration is the basis for a trade mark infringement claim or other claim brought against the plaintiff, in which case the registration may be challenged through a counterclaim.

There are many other scenarios where legal standing can be found. For example, a celebrity will almost always have legal standing to challenge the unlawful registration of their name or pseudonym as a trade mark.

It is common to file applications identical to the registration to be challenged for the specific purpose of creating legal standing for the challenge and, also, to block additional applications from the owner of the challenged mark.

Revocation/cancellation actions are brought exclusively before the Trademark Office, with the courts intervening only in appeal.

If the claim is based on prior use or on the basis of a prior registration, the cancellation can be partial and only cover the products or services of the registration that overlap with those used or covered by the prior registration.

For claims of lack of use a partial cancellation can occur if some products or services are used, with the cancellation comprising only the unused products or services.

The trade mark owner may, at any time, delimit the products or services covered by their registration. Sometimes, as a strategy to avoid conflict, the owner of the registration may seek to limit the products or services it covers.

If the infringement claim was filed with the Trademark Office, then the proceedings will run separately and independently and then, the Trademark Office will solve them at the same time in a single decision. If the challenge to the registration was successful, that will typically destroy the infringement claim.

If the infringement claim was instead brought before a court, then the plaintiff that challenged the registration will have to inform the court of the challenge and the court will then stay the proceedings pending the decision on the challenge to the registration.

Trade mark registrations that were obtained in bad faith can be cancelled before the Mexican Trademark Office through a cancellation proceeding. There is no special procedure.

To bring infringement claims before a judge, Article 399 of the Federal Law for the Protection of Industrial Property Provides a term of two years. For the Trademark Office, the Federal Law of Administrative Procedure foresees, in Article 79, that it can investigate and punish infringements occurred up to five years prior, counted from the date that the infringement ceases.

The trade mark owner can initiate the following actions for trade mark infringement:

• an administrative infringement procedure with the Mexican Trademark Office which may result in the imposition of severe fines, an injunction ordering the infringement to desist and damages awarded by the Mexican Trademark Office;
• a civil claim for damages before a civil judge and which no longer requires to previously attempt the proceeding indicated in letter a above; and
• certain forms of trade mark infringement, namely trade mark forgery can constitute federal crimes and the plaintiff can initiate a criminal proceeding.

Cybersquatting

Cybersquatting and dilution of trade marks are not subject to specific proceedings but if the plaintiff can show that the marks are confusingly similar or that at least such actions constitute unfair competition then the plaintiff can proceed as per the above.

A licensee can, absent an agreement to the contrary, claim infringement to the licensed trade mark registration. Trade mark rights arise through registration in most cases, and a trade mark owner will typically have to wait until the mark is registered to claim infringement. Still, if another prohibition of the law can be invoked, eg, that the used mark is deceptive, it may still be possible to have the alleged infringer fined.

While collective/class actions do exist in Mexico, they are suitable, as per Article 580 of the Federal Code of Civil Procedure, to tutelage collective/diffuse rights or rights with an incidence in a collective group and thus not typically available as a remedy for trade mark infringement.

For trade mark infringement claims, the mark must be registered. To obtain damages, initiate criminal proceeding and obtain a preliminary injunction it is necessary to indicate that the trade mark is registered. Sending a prior letter or engaging in mediation is not necessary.

Typically, the initial complaint must be detailed enough to justify the claim and cannot normally be supplemented or changed later on. The complaint must also be filed along with any supporting documents. Once the complaint is answered, the plaintiff can be allowed to file additional arguments and offer additional evidence but only to discredit the answer and its supporting evidence and not to file arguments and evidence that should have been filed in the initial complaint.

The defendant can not only answer but also pursue counterclaims to target the validity of the allegedly infringed registration.

The Mexican Trademark Office can hear the infringement claim in the first instance. Alternatively, the plaintiff can also file a claim for damages before a federal district judge or a state judge. Criminal proceedings are initiated before a federal public prosecutor. The costs involved before proceeding will typically include certified copies of the allegedly infringed registration and evidence of the infringement, typically attested to by a notary public or public broker. The plaintiff need not be represented by a lawyer, but it is highly advisable.

If the Trademark Office finds infringement was committed a severe fine of up to around a USD1 million will be imposed on the infringer, plus an injunction ordering the infringer to desist under threat of additional fines. If the infringement can be linked to a specific establishment, the Trademark Office may order a temporary or permanent closure of it as an additional punishment.

Any preliminary injunction may become permanent. Any products or other implements to commit the infringement seized during the infringement proceedings can be destroyed, donated or otherwise disposed of as determined by the parties or by the Trademark Office if they do not agree.

The fines can be executed by the Trademark Office if unpaid, with measures similar to those used for unpaid taxes. The plaintiff to a successful infringement claim before the Trademark Office can request such authority to award damages and a special proceeding can be initiated for such purpose with the Trademark Office.

The infringer cannot normally initiate declaratory proceedings. If a preliminary injunction is requested by the plaintiff a bond must be posted by plaintiff to secure the damages that may be caused by the defendant and the bond will be lost in the defendant’s favour if the plaintiff fails to pursue the claim to a favourable conclusion. Regardless, the defendant may pursue a counterclaim against the validity of the plaintiff’s registration as soon as the defendant receives a formal notice of the plaintiff’s complaint.

Depending on the circumstances, the defendant may not need to wait to receive notice of a legal proceeding and may bring a challenge against the plaintiff’s registration. Sometimes, a written demand such as a letter may provide the necessary standing to do so.

If the trade mark is forged (ie, an identical or nearly identical mark used to pass-off as the original), criminal proceedings may be initiated in addition to the proceedings before the Mexican Trademark Office or a claim for damages before a civil judge. Criminal liability may also fall on importers, distributors or sellers or supply chain thereof of the products bearing the forged trade mark.

In addition, customs officers are supposed to notify trade mark owners of any imports that may infringe registered marks and there is a special database where trade mark owners may provide customs with information to help them detect counterfeit products such as the identity of authorised importers, the usual ports of entry, etc. Participation in this database is optional, but it can help customs officers to more readily detect counterfeit products.

Once informed by customs, the trade mark owner may initiate the proceedings indicated above before the Trademark Office a civil judge or a criminal prosecutor or else, if no proceedings are initiated, customs will eventually release the products.

The rules for trade mark infringement proceedings before the Mexican Trademark Office are regulated in the Federal Law for the Protection of Industrial Property and the Federal Law of Administrative Procedure. For procedural matters unforeseen by such statutes, they can be supplemented by the Federal Code of Civil Procedure. For civil claims for damages filed before a federal district judge, the same code would be applicable. For civil claims brought before a state judge, the applicable state code of civil procedure would be applicable. A criminal complaint would use the National Code of Criminal Proceedings.

The plaintiff will normally choose the route to prosecute the complaint but otherwise does not choose the decision-maker. The parties may seek a recusation of the decision-maker if they believe that he has a relationship with the parties or otherwise would not be impartial.

The decision maker is always a government officer, there are no juries in Mexico for trade mark infringement proceedings.

The defendant can argue as a defense that the allegedly infringing mark has been used not as a trade mark but as a generic description of the products or services in question or as a part of a lawful comparison of goods and services. If so, the plaintiff would need to argue otherwise, for instance by showing that the product or service is identified by the trade mark.

Normally, the infringed mark, as registered, would be compared against the infringing mark, as used, to determine if there is likelihood of confusion. The marks would be compared as a whole, though the examiner or judge could also consider the distinctive character of the elements comprising the marks in their comparison. The goods and services covered by the registration certificate of the infringed mark and those in which the infringing mark is used would be considered and they would normally have to be identical or similar for the claim to succeed.

To determine similarity between the goods or services, factors such as the channels of trade, similar uses, the competitor or complement relationship and the potential for interference between them would be considered. In general, infringement would be found if there is a risk of confusion from the marks and the goods and services they cover or other risk of unfair competition.

The risk of a false association between one trade mark and the other or other forms of unfair competition may be raised by the parties and considered. In the case of cybersquatting, if there is likelihood of confusion or other potential for unfair competition infringement may be found. Dilution may be raised as a defence by the defendant if the element that the marks have in common is diluted and thus, it may be argued, does not provoke confusion.

As a general rule, claims for trade mark infringement may only be brought if the mark is registered. Registrations are presumptively valid and provide exclusivity over all products or services covered by the registration certificate. Thus, if the defendant wants to argue that the registration is not valid it is the defendant’s procedural duty to file a successful challenge against it.

Prior use in Mexico can be a valid defence if the defendant can show that he begun uninterrupted use preceding the filing date, priority date or claimed date of first use of the registration. An exhaustion of rights can also be argued if the defendant can show that the allegedly infringing goods originated from the trade mark owner or a licensee thereof. In addition, the infringer could argue that the allegedly infringing mark was not used as a trade mark (to identify the infringing goods/services) but just as part of a lawful comparison of goods and services or other conduct permitted by the law.

Any challenge to the validity of the infringed registration could be raised not as a defence but as a proper claim or counterclaim and the infringer would need to show that the respective proceeding has been initiated for an argument against the validity of the registration to be considered.

Jurisdiction and venue are not as much of an issue as in other jurisdictions and thus, as defences they would seldom be useful. The Mexican Trademark Office and a federal public prosecutor would have nation-wide jurisdiction whereas a federal or local civil judge of the defendant’s domicile would have jurisdiction over them.

It shall be mentioned that in trademark infringement proceedings a presumption of innocence applies and the plaintiff has to rebuke such presumption through evidence and arguments to prevail. The scope of this presumption of innocence will be greater in criminal proceedings, but it will also apply before the Mexican Trademark Office

The parties can ask the Trademark Office or a judge or a federal public prosecutor to compel the other party or a third party to provide relevant information or documents or to visually inspect websites or premises located in Mexico, specifying in each case the documents and information to be sought. However, discovery as broad as that of the United States’ Federal Rules of Civil Procedure is not available. The laws of Mexico constrain to keep tax filings and receipts, along with books and correspondence relating to commercial activities for several years and a failure to produce such documents can often be construed as an admission that they would show information adverse to the party that fails to produce them.

In most cases, experts and surveys are not necessary for determining the likelihood of confusion between trade marks or the similarity between the products and services they cover as this is considered a matter of law for a judge or the Trademark Office to determine alone. Still, if the parties so require and if deemed relevant by the decision maker experts and surveys can be offered as evidence, but they will not normally be binding upon the decision maker.

If, however, the famous or well-known character of the trade mark is being asserted as a claim or as part of a defence or counterclaim, a survey or expert could be relevant to sustain the argument that the mark is well-known or famous as defined by the law.

Trade mark infringement proceedings can be brought with the Mexican Trademark office and they will impose a severe fine and other punishments if infringement is found. If a trade mark is forged, then criminal liability may result including imprisonment and a severe fine. In both cases, the owner of the infringed mark may also pursue damages.

These would be of USD10,000-15,000 plus taxes, government fees and expenses, though this will of course depend on the resistance from the defendant, costs for obtaining evidence, counterclaims, etc.

The plaintiff to a trade mark infringement case before the Trademark Office or before a judge can ask for a preliminary injunction in the initial complaint or shortly before filing the initial complaint. This can force the infringer or third parties to seize the infringing conduct. In addition, the infringing goods themselves and any implements used in the infringing conducts can be sequestered.

However, a bond will need to be posted by the plaintiff to guarantee the damages caused to the defendant if the final decision of the case does not rule in the plaintiff’s favour or if the plaintiff does not prosecute the case all the way through. In addition, the plaintiff will need to show that he has informed the public that the mark is registered. The defendant can post a bond of his own to try to lift the preliminary injunction imposed and in such scenario the decision to leave or remove the preliminary injunction will be taken by weighing the prejudice caused to either party and to the general interest. The preliminary injunction may become permanent on the final decision.

Any final decision from the Trademark Office finding infringement occurred will also contain an order to desist from the infringement and additional fines will be imposed for every day that the infringement subsists.

In criminal proceedings, federal public prosecutors can also request or impose (depending on the stage of the case) preliminary injunctions and measures which may be required to protect from further infringement and ensure the continuance of the proceeding.

As per the Federal Law for the Protection of Industrial Property, damages may be awarded by either the Trademark Office upon the favourable conclusion of an infringement proceeding or separately and independently by a judge, without the need to go to the Trademark Office, and will be calculated upon any “legitimate indication of value” including:

• the profits lost by the owner of the infringed trade mark registration;
• the value of the infringed goods or services as per their market value or their suggested retail price;
• the profits received by the infringer from the unlawful conduct; and
• the price that the infringer would have needed to pay for a licence as per the commercial value of the trade mark and existing licenses over the trade mark.

The obligations imposed in the final decision on the infringer and the possibility or impossibility of fulfilling them will also be considered. The law provides that the award for damages will be of no less than 40% of the “legitimate indication of value”.

Any products, inventories and implements used to commit the infringement (molds, advertising, machine, pieces, etc) seized during the infringement process can be destroyed upon its favourable conclusion.

Each party is responsible for its own costs. In a civil case for damages, and depending on whether the case is filed in a federal or state court, the losing party may be required to reimburse some of the costs.

Notice and opportunity to answer to the claim need to be given to the defendant as per the constitution of Mexico and the defendant cannot be punished or fined or subject to a damages award or injunction without them.

If a preliminary injunction was issued and a bond was posted by the plaintiff for such purpose, the defendant is entitled to it for the damages suffered. In a civil case the defendant might be entitled to a reimbursement of legal fees.

Parallel imports are lawful in Mexico and there is no remedy against them from a trade mark perspective. For the import of counterfeit products detected by customs, the plaintiff may initiate the infringement proceedings previously detailed before a judge, public prosecutor or the Trademark Office and ask for a preliminary injunction and seize the infringing goods. Customs has a database where trade mark owners can upload information to help detect counterfeits such as information on lawful importers and the ports of entry they normally use.

Remedies are the same regardless of the kind of mark infringed.

Before the Mexican Trademark Office and at any time before the decision of an infringement case, either party may submit a settlement proposal, which will then be formally served to the other party to provide a reply accepting, denying or making a counterproposal. If there is interest and a counterproposal is made, the Mexican Trademark Office will summon both parties to formal conciliation hearing in which it shall try to assist the parties to reach a solution and execute an agreement. A lack of reply to the proposal will be construed as a lack of interest. An agreement executed and submitted before the Trademark Office will end the case and be considered to have the same authority as the final decision.

For a civil claim for damages, most state civil procedure codes foresee a mandatory conciliation hearing that usually takes place once the complaint is answered. Some states also offer mediation services, often with government-certified mediators. For criminal proceedings, the National Code of Criminal Proceedings foresees the possibility of settling criminal cases with the agreement of both the alleged criminal and the alleged victim with a written “reparation agreement” that will be approved by the public prosecutor or the judge.

Trade mark infringement disputes can also be arbitrated. The parties may designate the Mexican Trademark Office or any appropriate arbitration institution of their choosing. As per the laws of Mexico, an agreement to arbitrate a dispute must be in writing. The Commerce Code of Mexico contains rules for supplementing an agreement to arbitrate, including supplemental procedural rules (notices, appointment of the arbiters, etc) and also provides the obligation of Mexican judges to respect and enforce both the arbitration agreement and the decision from the arbiter.

While there has been much improvement in the use of ADR and while the Mexican government has made substantial efforts to increase the use of ADR, the fact is that most trade mark infringement cases are not solved though the use of ADR.

If the Mexican Trademark Office is hearing both the infringement and the cancellation proceedings, it will carry on both proceedings in parallel and then decide them at the same time through a single decision.

If the infringement case is heard by a judge and the cancellation is heard by the Mexican Trademark Office then the judge will suspend the case until the Mexican Trademark Office rules on the cancellation.

For an infringement case solved by the Mexican Trademark Office, the recourses are the same as for the refusal of a trade mark application, namely a motion for review (filed within 15 days of notice of the decision) by the hierarchical superior of the officer that decided the case or an appeal with the Federal Court of Administrative Justice (filed within 30 days of notice of the decision). Typically, only the final decision of the case is subject to being challenged and any and all procedural issues that may have occurred will have to be disputed along with the final decision of the case.

For civil or criminal proceedings both the final decision of the case as well as certain procedural resolutions issued before the final decision can be appealed with a higher court. For procedural resolutions issued before the final decision an appeal may sometimes interrupt the proceeding, but not always.

A typical appeal before the Federal Court of Administrative Justice for a trade mark infringement case will take around a year and a half in being solved.

There are no special provisions for the appellate procedure of a trade mark infringement case the parties would have to look to the Federal Code of Civil Procedure (or the state code), the National Code of Criminal Procedure or the Federal Law of Administrative Procedure or the Federal Law of Administrative Dispute Procedure for the applicable rules.

As a general rule an appeal is not an opportunity to submit arguments and evidence that could have been made in the first instance. An appeal can include a review of both the facts that were found from the evidence provided and of purely legal questions.

However, it shall be mentioned that the decisions issued on trademark infringement cases by the Mexican Trademark Office are presumptively valid and the facts mentioned therein are to be considered presumptively true when in appeal before the Federal Court of Administrative Justice. Therefore, a party appealing a decision from the Mexican Trademark Office has the burden of persuading the judges of the illegality of the decision and to support the contradiction of the facts mentioned by the Mexican Trademark Office through evidence.

The Federal Copyright Law does exclude isolated words and phrases from copyright protection, thus this protection will not typically extend to word marks. Since the copyright law also demands fixation for copyright protection, scents would probably be excluded as well in most cases. Logos and holograms can be protected through copyright as drawings. Three-dimensional marks may qualify as works of applied art or sculpture depending on the case. Sounds can be protected as musical works.

The law allows the Mexican Copyright Office to grant a right of exclusive use somewhat similar to a trade mark registration and which may overlap over the following:

• the titles of periodical publications such as magazines and which is necessary to obtain the ISSN number;
• the titles of periodically broadcasted contents such as television shows and streaming contents;
• the name and characteristics (both physical and psychological) of characters; and
• certain novel characteristics of advertising campaigns.

Three dimensional marks can also be protected as industrial designs if they meet the novelty requirement. For example, the bottles of alcoholic beverages can often be registered as either a trade mark of Class 33 or as an industrial design.

In Mexico, the general rule is that the name, pseudonym, voice and likeness of a famous individual can only be used or registered as a trade mark with their authorisation or that of their heirs. The rights to a person’s image will last for 50 years after death.

In addition to trade mark law there is a Federal Consumer Protection Law which regulates advertisings and offers to consumers and whose provisions may ban certain forms of unfair competition such as exaggerated comparisons between trade marked products.

The Federal Law for the Protection of Industrial Property is new, having entered into force on 5 November 2020. It provides for a faster trade mark application process, easier enforcement and greater risks for infringers.

The liability for online infringement is no different than the liability in the physical world. There are no specific rules for trade marks regarding server provider liability, though it could be argued that unless the service provider is the one selling the trademarked goods or services they are not “using” the mark and thus not infringing. Still, they have to cooperate with the Mexican government and both judges and the Mexican Trademark Office may validly order them to remove or eliminate infringing contents.

Domain names with the country code .mx are subject to rules very similar to those of the Uniform Domain-Name Dispute Resolution Policy with WIPO managing the dispute resolution process.

Companies should be aware that having a company name does not constitute an authorisation to use that company name as a trade mark for products or services. A common misconception is that just because a company has been incorporate with a certain name that it can use it as a trade mark. Use of a company name can very well infringe a trade mark registration. Companies should also be aware that in Mexico unlike other countries, registration is often the only way to obtain an enforceable right of exclusive use.

For the sale of products protected by a geographical indication or appellation of origin the respective regulations do sometimes provide that the trade mark used in Mexico must be registered in Mexico. For example, this is normally the case of tequila and mezcal trade marks in Mexico.