As a follow-up to our Newsletter No. 5 regarding recent amendments to Mexico's industrial property law concerning trademarks, we wish to further inform you of the following developments.
At the time of the previous newsletter, publication of the corresponding Decree announcing the amendments in the Mexican Official Diary was pending; the Decree was published on May 18, 2018 and will be in force as of August 10, 2018, pursuant to the first article of the transitional provisions.
The Mexican Institute of Industrial Property (IMPI) will need to publish a set of regulations well in advance of August 10 so that there is a clear understanding as to the scope of the amendments and new provisions. We will notify you as soon as these regulations are available.
As highlighted in our previous newsletter, the changes introduced to the Trademark Chapter of the Industrial Property Law are as follows:
- Trademark protection through registration is provided for trade dress, certification marks, and holograms, as well as for non-visible signs, such as smell marks and sound marks;
- Secondary meaning is now recognized as an exception to descriptiveness;
- Consent and coexistence agreements will be allowed to overcome senior rights;
- Bad faith is incorporated as a ground for both opposition and invalidation;
- Traditional class headings will no longer be possible. It will be necessary to specify product and service descriptions according to the Nice Classification.
- Oppositions will become binding for IMPI; this means that the Office will have a vested interest in issuing decisions that are duly grounded in and based on the merits of each opposition filed.
- A declaration of use must be filed under oath within three months after the third anniversary of the date of the trademark being granted registration. Failure to file a declaration of use will cause the registration to lapse
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.