Co-published editorial
Uhthoff, Gomez Vega & Uhthoff
A mark is not always a mark:
interpreting trademarks in Mexico
Some of the concepts set out in the Industrial Property Law require updating in order to meet modern global
commercial demands, but a degree of protection is afforded to non-conventional marks
In order to make a product or service more
attractive or distinguishable, non-traditional
marks are often used in modern marketing
strategies. However, such use may result in a
lack of adequate protection in some
jurisdictions.
Now that business is conducted on a
global scale due to technological advances
such as the Internet, manufacturers and
service providers face pressure not only
from the competition, but also because
consumers are more demanding of new
characteristic elements when deciding what
to buy. Their decisions may be led by factors
such as the overall appearance of the
product or even colours or textures.
Marketing experts now not only focus on
how a product looks, but also have expanded
their strategies to cover the senses of touch
through texture marks, hearing through
sound marks, smells through olfactory marks
and even taste through flavour marks. Every
way of making a product or service more
attractive is now considered.
But not all legislation around the world
is sophisticated enough to protect new
forms of visible or invisible signs, even
though some such marks are fully capable
of functioning as an indication of source
and distinctiveness for goods or services.
Case law
In Mexico, relying solely on non-traditional
marks is inadvisable for reasons that are
explained below.
Some so-called ‘non-traditional’ marks
may be fully capable of functioning as
trademarks. However, under Mexican law it
may not be possible to protect some of
these distinctive signs, and consequently
the creation and enforcement of rights
become impossible.
Mexico is a registration country. Thus,
under the Industrial Property Law, the
112 World Trademark Review August/September 2011
exclusive right to use a mark derives from
registration and not from use. Although the
use of unregistered marks may provide the
user with certain rights, it is never a good
idea to trade under an unregistered sign.
Compared to foreign jurisdictions where
a non-traditional mark is not registrable
until it has acquired distinctiveness through
use, in Mexico, the legal standard for
registration is absolute distinctiveness.
Therefore, the secondary meaning doctrine
or acquired distinctiveness does not apply.
In light of the above, a mark owner
should always check with local counsel as to
whether the distinctive sign to be used in
Mexico is registrable and which course of
action would be best to obtain protection,
particularly when it comes to nontraditional marks such as sounds, scents,
holograms, motion marks, threedimensional (3D) shapes, trade dress,
colours and textures.
Legal framework
Article 88 of the Industrial Property Law
defines a ‘mark’ as any visible sign that
distinguishes goods or services from others
of the same type or class in the mark et.
However, Article 89 of the law states that
the following signs may constitute a mark:
“I. denominations or visible devices
sufficiently distinctive and capable of
identifying the goods or services they
intend to cover, from others of their
same class or type;
II. 3D shapes;
III. commercial names and
denominations or corporate names;
IV. the name of an individual as long as it
does not lead to confusion with a
registered mark or a published
commercial name.”
As soon as the law clearly states that a
mark is a “visible” sign, it closes off the
possibility of considering and protecting as
such non-visible signs such as sounds,
smells or textures.
But complying with the requirement of
visibility is not enough. In this regard, not
all visible signs are protected. Visible signs
such as holograms or motion figures, which
could certainly function as marks, cannot be
protected as marks since Article 90 of the
law states that the following cannot be
registered: “denominations, figures or 3D
shapes which are animated or expressed in
an animated way regardless if they are
visible.”
The biggest challenge for local counsel is
to think outside the box in order to find
alternative ways to protect non-traditional
marks. For instance, a sound mark could be
protected under copyright as a musical
work. Although, regardless of registration,
artistic works are protected under the Berne
Convention for the Protection of Literary
and Artistic Works in all member countries
to the convention, it is advisable to consider
the registration of such artistic work in
Mexico due to local requirements, such as
the need to file documents to demonstrate
legitimate ownership of the artistic work
(eg, an assignment agreement or a work-forhire contract).
One aspect that is vital to consider
regarding an assignment of rights over an
artistic work is that in general, the
maximum term of an assignment (except
for literary works or software) is 15 years.
However, the Copyright Law establishes that
a longer period can be stipulated when the
amount of the investment justifies it – a
very subjective exception.
As for work-for-hire contracts, they
cannot be oral; they must be written and
must clearly stipulate the amount paid to
the author and the nature and type of work.
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Country correspondent: Mexico
Holograms and motion marks can also
be protected under copyright, but again it is
always important to consult local counsel in
order to obtain the correct protection.
Although copyright may provide a
certain degree of protection, it has some
disadvantages. One is that copyright
registrations do not constitute rights, but
merely establish a good-faith presumption
of ownership. In addition, and perhaps the
biggest disadvantage of copyright, in time
the artistic work will fall into the public
domain. In this regard the general rule
contained in the Copyright Law is the life of
the author plus 100 years after his or her
death.
In Mexico, 3D shapes, which some
foreign regimes consider to be nontraditional marks, are fully protected, not as
trade dress as in the United States but as
trademarks, without the need to prove
secondary meaning.
Distinctive shapes such as bottles or
packaging are specifically mentioned as
trademarks by the Industrial Property Law.
A manufacturer may decide to apply for
registration of the bottle by itself or
combined with other elements – for
example, the shape of a champagne bottle
with the label or cap.
Nevertheless, certain requirements must
be fulfilled in order to grant protection for
3D marks. The shape must be distinctive and
non-functional or determined by its
industrial nature.
In 2010 a court ruled that when a 3D
shape is not distinctive, regardless of the
incorporation of other elements such as a
label, registration cannot be granted. This
decision is questionable since it violates the
rule that marks should not be dissected
when studied. Even if a 3D shape is not fully
distinctive, it may incorporate powerful
distinctive elements such as a logo, and the
general public does not focus all of its
attention on the 3D shape, but on the
overall appearance of the product.
Obtaining protection for a 3D mark
usually requires the mark owner to ask the
federal courts to reverse a decision of the
Mexican Trademark Office, which applies
strict criteria when analysing such
distinctive elements.
Under the Industrial Property Law,
phrases that are intended to advertise goods
or services can be registered as commerc ial
slogans. The main difference between a
mark and a commercial slogan is that while
a mark is intended to distinguish goods or
services functioning as a source indicator, a
slogan is intended to advertise such goods
or services. A commercial slogan enjoys the
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the product to which they are applied
certain advantages.
Finally, although descriptive marks are
not among the marks considered to be nontraditional, in Mexico, as previously
mentioned, the secondary meaning rule
does not apply. Consequently, in spite of the
efforts made by manufacturers in their
advertising to make such marks are
distinctive, they will never be the subject of
registration in Mexico and consequently no
related rights can be enforced.
Gerardo Parra
Associate
[email protected]
Gerardo Parra was born in Guadalajara,
Jalisco, Mexico. He obtained his law degree
in 1998 from the Universidad
Panamericana, Mexico. He also holds a
postgraduate qualification from the same
university and graduated with honours
from the John Marshall Law School,
Chicago, where he obtained an LLM in IP
law. He works in the trademark
department of Uhthoff, Gomez Vega &
Uhthoff and is fluent in Spanish, English
and Italian.
Comment
Some of the concepts set out in the
Industrial Property Law require updating in
order to meet modern global commercial
demands. Although an amendment to allow
the registration of non-traditional marks
such as smells, textures or isolated colours
is expected at some point in the future,
protection under other IP rights should be
considered, particularly in regard to sounds,
moving images and holograms. In addition,
the possibility of adopting the secondary
meaning doctrine merits some thought. WTR
same protection as a mark. Therefore, it can
be renewed and the rights deriving from its
registration are fully enforceable.
Under the Paris Convention, priority can
be claimed for a Mexican commercial
slogan application based on a foreign trade
or service mark application. This is because
not all jurisdictions have a special
registration for slogans.
In addition, recently the Trademark
Office has begun to object to the
registration as trademarks of phrases that
clearly indicate an intention to advertise
goods or services. Consequently, it is vital to
discuss with local counsel the way in which
such a phrase is used in order to determine
whether it constitutes a mark under local
practice.
In regard to the protection of isolated
colours, digits or letters, Article 90(v) of the
Industrial Property Law prohibits their
registration unless such elements are
combined with others or stylised in the case
of digits and letters.
Other non-traditional marks, such as
smells and textures, cannot be protected
under the Industrial Property Law or the
Copyright Law even though they may give
August/September 2011 World Trademark Review 113