Mexico – Trademark law reform enters into force

As reported in our previous posts, the Trademark Reform brings a range of largely positive changes for brand owners, including:

• protection of “non-traditional marks”, namely holographic signs, sound and smell marks
• mandatory acceptance of consent letters and coexistence agreements
• refusals on descriptiveness/lack of distinctiveness may be overcome by arguing “secondary meaning” (acquired distinctiveness due to its use)
• oppositions will become binding and the Mexican Trademark Office (MTO) will be required to issue reasoned decisions
• all office actions related to trademarks will be notified through the electronic IP Gazette, which will speed up the administrative proceedings
• there will be a 10% reduction in office fees for online trademark filings as well as for filings of non-traditional marks

In relation to some amendments, brand owners should be very careful as they will be required to take pro-active steps to keep their marks  enforceable and alive.

"In particular, for all trademarks filed or granted after 10 August 2018, submision of a declaration of actual and effective use will be required once the trademark becomes subject to use (the declaration needs to be presented within 3 months once 3 years have elapsed since registration of the trademark)."

If no use declaration is presented in time, the trademark will be considered abandoned. Likewise, a respective declaration has to be presented at the time of the renewal of trademarks filed after 10 August 2018. So far, it is not required to submit actual evidence of use together with the declaration.

"Another important change brand owners have to be aware of is that trademarks can no longer be filed for a broad range of goods and services but only for the specific goods and services of interest."

This change comes in line with the fact that the MTO will most likely start allowing partial cancelation actions, which means that in a non-use attack, use for each of the goods and services covered must be proven. Bearing in mind that the MTO´s previous practice was that a trademark as a whole can be defended against non-use if use of one single listing covered can be proven, this will result in a drastic change.

Further details as to the implementation and execution of  the Trademark Law Reform by the MTO will be revealed once the final texts of the MTO´s guidelines has been published, which is expected by the end of August 2018.

While the above are the key points for brand owners to consider right now, we do expect further developments and will update you on these as they happen.

Authored by Bernardo Herrerias Franco, Alfredo Pineda Nieto and Valentina Schmid