The linkage system

For many years, a usual complaint from patent owners of pharmaceutical products was that the Mexican FDA -Comisión Federal para la Protección contra Riesgos Sanitarios, better know by its acronym COFEPRIS- was encouraging patent infringement by issuing marketing authorizations for patent-infringing drugs.

On 2003, the President amended the Reglamento de la Ley de la Propiedad Industrial or Rules of the Industrial Property Law and the Reglamento de Insumos para la Salud or Rules for Health Supplies to create a "link" between the Mexican Patent and Trademark Office (MPTO) and the Mexican FDA.

According to the amended Rules of the Industrial Property Law, the MPTO must publish every six months an updated list of patented drugs, identified by the name of the active ingredient.

Comment (1) Read More...

An amendment to the Industrial Property Statute published on January 2010, and to the guidelines of the Mexican Patent and Trademark Office (MPTO) for the filing of new trademark applications will make the trademark filing process less formal than it used to be.

Mexican law was already quite liberal, when compared with most Latin American countries, regarding the formal requirements for power of attorney documents for trademark and patent filing, prosecution and maintenance. Mexican law does not demand notarization, consular legalization or Apostille on such documents. Now, the law is going a little further.

The MPTO will no longer request a power of attorney document in most trademark filing cases.

Instead, the MPTO will consider that the agent is authorized to file the trademark

Comment (8) Read More...

Between January 6 and 8, 2010, several Mexican media, such as the Mexico City-based newspapers La Jornada and El Universal informed that the Instituto Nacional de Antroplogía e Historia or National Anthropology and History Institute (INAH) fined the operator of the well-known chain ‘Starbucks' for "using prehispanic images in some mugs offered in sale at its premises, without proper authorization".

This case has been incorrectly identified as an intellectual property infringement case. Actually, this matter is not related to intellectual property or copyright, but to the special regulations that govern the use and property of the pieces and objects created by the native cultures settled in Mexico before the arrival of the Europeans, generically known as prehispanic pieces and cultures.

The

Comment (12) Read More...

Mexico, as most civil-law countries, follows the first-to-file principle; it means that the first to file has priority to obtain the trademark registration, hence, to be acknowledged as proprietor of the trademark.

Nevertheless, Mexico acknowledges certain rights and defenses for the users of non-registered trademarks; Mexico also allows applicants to claim a date of commencement of use in Mexico, in order to obtain some benefits after the issuance of the trademark registration. In any case, these rights and defenses should not be construed as common-law rights (there is no common-law in Mexico) or exceptions to the first-to-file principle: the first applicant has priority to get the trademark registration, no matter who claimed the earliest date of first use or if the earliest applicant

Comment (8) Read More...

The INTA Bulletin of July 209 (Vol. 64 No. 12) informed that the International Trademark Association (INTA) filed an amicus brief with the Specialized Chamber in Intellectual Property of the Federal Court of Tax and Administrative Affairs (FCTAA), in connection with an appeal filed against the Mexican Patent and Trademark Office (MPTO).

According to the bulletin, the basic purpose of the amicus brief was to persuade the FCTAA to "reverse the decision rendered by IMPI (the Spanish acronym for the MPTO) and to interpret the law to provide Mexican trademark owners with the right to seek cancellation of a registration on the ground of bad faith, a right currently enjoyed by foreign trademark owners."

Of course, as a Mexican lawyer, it was interesting to learn that INTA was involved in a Mexican

Comment (15) Read More...

The Mexican statutes do not stipulate any provision regarding trademark coexistence agreements and letters of consent. Nevertheless, these instruments have been widely used to prevent or overcome objections from the Mexican Patent and Trademark Office (MPTO) associated to applications for trademarks identical or confusingly similar to earlier registered or applied ones, protecting the same or similar products or services.

The Industrial Property Law provides that the MPTO will reject a trademark application when the trademark is identical or confusingly similar to an earlier registered or applied one, to cover the same or similar goods or services. Owners of existing registrations are allowed to apply for the registration of an identical trademark to protect goods/services similar to those

Comment (5) Read More...

On January 5, 2009, the Chamber specialized in intellectual property matters of the the Federal Court of Tax and Administrative Affairs (FCTAA) started working.

The Mexican Patent and Trademark Office (MPTO) is the first instance in most IP matters (registration, administrative enforcement and validity of IP rights).

For the second instance, the appellant has three alternatives available: (i) a petition for administrative review with a higher rank official of the MPTO itself (usually a waste of time); (ii) an amparo appeal with a Federal District Court; (iii) or an appeal with the FCTAA. The appeal with the FCTAA is the most usual.

The tribunal colegiado de circuito or federal court of appeals will continue being the final instance.

The FCTAA has jurisdiction to decide cases in a wide range

Comment (3) Read More...

The renewal of trademark registrations is an important aspect of the maintenance of any IP portfolio. Making the right decision about renewing (or not renewing) a trademark allows the proprietor to maximize the value of its trademarks, or cut unnecessary expenses.

In this post, I am explaining the basic aspects about renewing trademarks in Mexico, calling the reader's attention to two issues that should be carefully considered when the trademark owner decides to renew a trademark registration in our country.

The basics about trademark renewal in Mexico

A Mexican trademark registration is valid for a ten years term, counted from the filing date in Mexico, regardless the priority, registration or first-use date. The registration may be renewed an unlimited number of times for ten years

Comment (21) Read More...

The Mexican statute provides explicit protection for well-known trademarks since the Law of Patents and Trademarks of 1976. Before the 1976 statute, there is evidence of direct application of the stipulations stated in Paris Convention to fill the gaps in the Mexican statute, but none of the published decisions refer to well-known trademarks.

On June 16, 2005, the Federal Congress amended the Industrial Property Law to introduce important modifications to the provisions regarding the protection of well-known trademarks.

Before the amendment, there were two ways a trademark could be acknowledged as well-known in Mexico:

a) If the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) rejected a trademark application, arguing that it was identical or

Comment (7) Read More...

In a first-to-file country, such as Mexico, one way of foreseeing if a trademark is available for use and registration is conducting a trademark search with the databases of the Mexican Patent and Trademark Office (MPTO).

There are two main databases that may be consulted in a trademark search: the Industrial Property Gazette that the MPTO issues on monthly basis, and the online phonetic database of the MPTO.

Foreign entities that offer search services usually obtain the information from the Industrial Property Gazette, while local agents often use the online database. Unlike the trademarks database of the USPTO or the OHIM, there is no free access to the trademarks database of the MPTO to conduct searches;  it is necessary to have a prepaid account (Update: Starting June 1, 2009, the Comment (0) Read More...