JURISDICTION REPORT: MEXICO
Evolution of letters of consent in Mexico’s trademark cases
By Miguel García Talamantes of BC&B Law and Business
For the purposes of this article, it is relevant to consider that the intellectual protection in Mexico has always been mainly focused on protecting the consumer public’s ability to distinguish goods or services that can be acquired in the domestic market as coming from different commercial sources.
From this point of view, historically there has been a natural evolution in the consideration of documents that govern IP by the Mexican Institute of Industrial Property (MIIP). In this article I will provide a brief explanation of how letters of consent have been considered over time in the examination of trademark matters by the authority.
Risk of confusion
Historically, at the beginning, letters of consent were not accepted due to the risk of confusion that these documents could cause in the consuming public. In my opinion this was a mistake, since the MIIP is a registry authority and not the existing authority in our country for the protection of the consuming public, which is the Federal Consumer Protection Agency.
Subsequently, letters of consent continued not to be considered in Mexican Law as transcendental instruments for the prosecution of trademark applications and until recently these documents were not included in the applicable provisions of the local law. However, it is important to point out that despite the above, the use of letters of consent existed and their consideration always depended on the criteria of the trademark examiner on duty at the MIIP, thus, there was no legal certainty that obtaining a letter of consent for the prosecution of a trademark application would effectively benefit said prosecution.
Despite the above, under local practice we can establish certain parameters that have generally determined whether a letter of consent will be accepted or not. As a starting point, the trademarks should not be identical to each other or the previous registration should not be completely contained in the trademark application, also, the trademark application should not cover identical goods or services to the previous registration.
Thus, in the 2000s, the MIIP changed its practice regarding letters of consent due to the lack of local legislation on this issue. In these years, it adopted a more restrictive point of view than before, as the MIIP accepted letters of consent only in cases where the trademarks involved were not similar “at its examination” and covered different goods or services.
“There was no legal certainty that obtaining a letter of consent for the prosecution of a trademark application would effectively benefit said prosecution.”
Miguel García Talamantes
Change in stance
However, I believe that this will change as of the amendments to the Industrial Property Law that entered into force on August 10, 2018, which include an exception to the enforceability of the prohibition contained in section XVIII of Article 173 of the Federal Law for the Protection of Industrial Property:
Article 173. The following shall not be registrable as trademarks:
XVIII. Signs that are identical or confusingly similar to a trademark application filed earlier, or to a registered and valid trademark registration, applied to the same or similar goods or services.
This includes those identical to a trademark application or registration in the name of the same owner, which distinguishes identical goods or services;
The provisions of sections XVIII, XIX and XX of this Article will not be applicable with respect to confusingly similar or identical trademarks for similar goods or services, when express written consent is exhibited in terms of the Regulations of this Law.
In my opinion, local practice in Mexico will evolve towards the textual application of the exception as drafted in the Law, which states that in case of confusingly similar or identical marks for similar goods or services, when the express written consent is exhibited, said trademark application shall in all cases be accepted for registration.
However, in the meantime, it is important to consider that in the event of an eventual rejection of a trademark application by the authority, this resolution may be appealed in order to force the authority to accept the registration of cases in which a letter of consent has been filed.
Consequently, it is undeniable that after the amendment to our Law, letters of consent should allow trademarks applications that are confusingly similar or identical to the cited application or registration and cover similar goods or services, to be accepted for registration by the local Authority. This is because now the authority is obliged to take into consideration letters of consent or coexistence agreements and in this way, respect the will of the owners of the conflicting trademarks.
Miguel García Talamantes is a trademark attorney at BC&B Law and Business. He can be contacted at: mgarcia@bcb.com.mx
Main image: shutterstock.com / pixelparticle