MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
• Actual use in commerce – ie, the trade mark must be actively used in connection with the goods or services for which it is registered (mere intention to use is insufficient). • Geographic scope – its use must occur within Mexico, as foreign use does not satisfy local requirements. • Continuity of use – sporadic or symbolic use does not meet the threshold; the use must be genuine and consistent. • Evidence – proof may include sales records, invoices, (proper document to prove use) advertis - ing or product packaging showing the trade mark in active use and such documents must contain (i) the mark as it was registered, (ii) the goods or services, (iii) the date and place, and (iv) the owner or licensee. 2.5 Notices and Symbols Trade mark owners may use specific symbols to denote the status of their marks. The registered mark symbol (®) indicates that the trade mark is registered before the Mexican Institute of Industrial Property (IMPI). Only marks that have been officially registered before IMPI can use the ® symbol. Unauthorised use of this symbol can lead to legal consequences. While there are no immediate legal penalties for failing to use the ® symbol, it is advisable to do so once the mark is registered. 2.6 Related Rights Trade marks may be subject to double protection, both as copyrighted material and under the FLPIP, simultaneously. However, different legal statutes are relied on to obtain this protection. Copyrights are declarative in that that they are pro - tected once they are fixed in a tangible medium and the Mexican Copyright Office (INDAUTOR) confirms and declares in favour of the authors the existence of copyrighted material. This is in contrast with trade marks, which are constitutive and require a registra - tion procedure to ensure protection.
A logo, for example, could therefore receive cumula - tive protection as copyrighted material in the form of a drawing work and as a trade mark as a design. The FLPIP establishes prohibitions on the registration of trade marks when: • they constitute names, surnames, appellatives or pseudonyms which could be well known or prestigious and could cause confusion or deceive consumers; • they are a personal image, identifiable voice, por - trait/picture or signature of a person; • they are identical or confusingly similar names to the titles of artistic or literary works; • they constitute reproductions or imitations of ele - ments of literary and/or artistic works; and/or • they are partial or complete reproductions of liter - ary and/or artistic works. It may be possible to overcome these prohibitions by obtaining the express consent of the author/titleholder having the legal right to authorise the registration of such elements. 3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works Article 13 of the FCL establishes copyright protection of the following categories of work: • literary; • musical, with or without lyrics; • dramatic; • dance; • pictorial or drawing; • sculptural and plastic art; • cartoons and comic strips; • architectural; • cinematographic and other audiovisual works; • radio and television programmes; • computer programs; • photography; • applied art works that include graphic or textile design, and
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