MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
Finally, preliminary injunctions are available in patent matters. The party requesting the injunction must post a bond, and the authority will determine whether the injunctive relief should be granted. The affected party has the right to lift the injunction by posting a coun- terbond, although the final determination remains with the competent authority. Remedies for the infringement can be administrative sanctions, fines, and injunctions. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Trade mark protection in Mexico is primarily governed by the FLPIP, alongside its regulations and applicable international treaties to which Mexico is a party. A wide range of signs may be protected, provided they are capable of distinguishing goods or services in the marketplace. These include: • word marks (including names, letters and num- bers); • logos and figurative elements; • three-dimensional shapes; • trade dress (overall appearance of products or establishments); • colours (when combined or associated in a distinc- tive manner); • sounds and scents; and • position, multimedia and motion trade marks. Mexico follows a registration-based system; however, unregistered marks may receive limited protection. Rights derived from use can be relevant, particularly in opposition and nullity actions, as well as in cases involving bad faith filings. 2.2 Requirements for Trade Mark Protection The core requirement for trade mark protection in Mexico is distinctiveness. A mark must be capable of identifying the commercial origin of goods or services and distinguishing them from others in the market. While use is not required to obtain registration, it becomes relevant in several contexts, such as, to sup-
port acquired distinctiveness, to defend against non- use cancellation actions or to establish prior rights in disputes Acquired distinctiveness (secondary meaning) may be demonstrated through evidence, such as, duration and extent of use, advertising and marketing efforts, market recognition and consumer perception, sales figures and market share. Mexico also recognises well-known and famous marks, even if they are not registered locally. These marks benefit from broader protection, including against dilution and registration of confusingly simi- lar signs, provided their recognition in Mexico can be proven. 2.3 Trade Mark Registration System Registration is not strictly required to have rights, but it is essential to obtain full enforceability and legal cer- tainty in Mexico. The registration process generally includes: • filing of the application before the IMPI; • formal and substantive examination; • publication for opposition (30-day period); and • issuance of a registration, if no obstacles arise. The typical timeline ranges from four to six months, assuming there are no objections or oppositions. Mexico does not allow multi-class applications. 2.4 Term, Use and Maintenance Trade mark registrations in Mexico are granted for a term of ten years from the registration date and may be renewed indefinitely for successive ten-year peri- ods. To maintain a registration, a declaration of use must be filed within three months following to the third year anniversary of registration. Renewal applications must include a declaration of use. Genuine use generally requires real and effective com- mercial use of the mark in Mexico in connection with the registered goods or services. Failure to use a mark
219 CHAMBERS.COM
Powered by FlippingBook