The last amendments to former Mexico’s IP law issued on May 18, 2018 and confirmed through the New Mexican IP Law of July 1, 2020, incorporate some new legal figures for trademark registrations based on use. In particular, article 173 of the new Federal Law for Protection of Industrial Property in Mexico states a list of non-registrable signs.
Among others, the list of non-registrable marks includes:
I. The technical names or commonly used of goods or services intended to be distinguished by the trademark, as well as those words, denominations, phrases, or figurative elements that, in ordinary language or commercial practices, have become usual or generic elements thereof, in addition to those that lack distinctiveness.
II. Three-dimensional forms or industrial designs that are available for the public domain or that have become of common use or those that lack distinctiveness, as well as the usual and ordinary form of the products, or that imposed by their nature or functionality.
III. Holograms that are in the public domain and those that lack distinctiveness.
IV. Signs which, taking into account all their characteristics, are descriptive of the products or services which they intend to distinguish. In the above case, descriptive or indicative signs used in trade to designate the species, quality, quantity, composition, destination, value, place of origin or time of production of the goods or services are included.
V. Letters, digits or their name, as well as isolated colours, unless they are combined or accompanied by other signs that give them a distinctive character.
VI. The translation, transliteration, capricious spelling, variation or artificial construction of unrecorded words.
The new amendments include a specific paragraph stating that provision of sections I to VI of the referred article shall not apply, where arising from the use made in trade on the goods or services for which the mark is sought, where the mark has acquired a distinctive character in the national territory, pursuant of the regulations of this law.
On the other side, article 231 states as granting requisite to indicate within the certificate of registration the circumstance by which the trademark was granted for acquired distinctiveness.
This amendment improves the protection spectrum for those trademarks that were limited for registration in the past. Besides, it is an opportunity to adopt precedents of countries such as the US or Argentina in which the history of secondary meaning has been regularly updated in case law.
“This amendment improves the protection spectrum for those trademarks that were limited for registration in the past.”
Emilio Albarrán
Proving acquired distinctiveness
It is mandatory to be aware of the partial protection in Mexico since, although the new provisions allow registration for new trademarks based on acquired distinctiveness, it does not contemplate the specific elements to prove that requisite.
For that reason, taking into consideration foreign precedents, we strongly recommend considering at least the following elements to prove the acquired distinctiveness:
- To prove a substantial proportion of the knowledge of the mark among consumers through market surveys. The purpose of this is to provide protection for those trademarks that are capable of uniquely identifying not only the goods or services but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.
- Second, to prove the use of the mark for a certain amount of time, being five years effectively recognised in some jurisdictions. It would be necessary to demonstrate that the mark has become distinctive of the applicant’s goods or services by reason of the applicant’s substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made.
- Other evidence. For this element, it would be useful to show advertising efforts during a considerable period or even prior registrations in the same speaking countries where the wording comes from.
Proving at least two of these proposed elements should be enough to obtain registration for non-distinctive trademarks in Mexico that acquired distinctiveness.
Considering the above, we are now one step closer to a more robust IP legal system, while the upcoming challenges would be to update IP regulations to include specific requirements/documents for the recognition of secondary meaning.
Emilio Albarrán is a lawyer at Becerril Coca & Becerril. he can be contacted at: ealbarran@bcb.com.mx
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