The marking of products or services that use industrial property rights (such as patents or registered trademarks), so third parties may be aware of the existence of such intangible assets, provides the right holders with certain benefits. The marking is not an actual obligation, given that failure to mark a product is not illegal by itself nor harms any third party's rights.

Marking a product with the indication of an industrial property right may prevent or discourage third parties from infringing the intellectual property right associated to a product or service. If, in spite of the marking, a third party infringes the patent or trademark right, the measures available for the right holder are also stronger.

There are certain rules about the marking of products provided in the Mexican statute:

1. The use of the symbol ®, the abbreviation M.R. or the expression "Marca Registrada" (Registered Trademark), "patente en trámite" (patent pending) or "patentado" (patented) may only be used if the trademark is registered in Mexico of there is a patent application or issued patent in Mexico.

The use of any of the aforementioned indications without a Mexican trademark registration, patent or patent application is illegal and an IP infringement, and the Mexican Patent and Trademark Office may impose a fine, or in extreme cases order the closure of the infringing premises.

There is the case of products imported into Mexico that use the symbol ® because the trademark is registered in the country of origin, but not in Mexico. In such case, the use of the ® is also illegal in Mexico.

The same rule is applicable to patented products. The indication about the existence of the patent or a pending application is valid only if there is a Mexican patent or patent application. In any case, given that the statute makes no distinctions, it is possible to use the expression "patente pendiente", even if the relevant Mexican patent application has not been published yet in our country.

2. The use of TM and SM is irrelevant in Mexico, thus it has no legal consequences.

The symbols TM and SM are use in the United States to claim common-law rights on a trademark protected by common-law. Mexico is a civil law country and common-law rights simply do not exist. In any case, the use of TM or SM may not replace the use of the ® symbol or an equivalent (M.R. or Marca Registrada)

3. Benefits from the use of marking associated to patents and trademarks

The use of markings to inform about the existence of a patent or registered trademark (i.e. the symbol ® of the word "patentado") provides certain benefits stipulated in the Mexican statute:

a) Request the Mexican Patent and Trademark Office the issuance and enforcement of preliminary measures (similar to a preliminary injunction) against an infringer.

b) File a lawsuit for payment of the damages and lost of profits that the infringement caused to the right holder.

c) File criminal charges with the General Attorney's Office in case of forfeited products identified with the registered trademark.

4. Alternatives to the marking of the products and services

There are ways to cure the lack of use of the symbols or expressions provided in the statute to inform third parties about the IP rights associated to a product or service.

The Industrial Property Law allows the owner of a registered trademark or a patent to use "other means" (without further definition) to inform third parties about the IP rights. In such cases, the benefits to the right holder are the same than if he has used the symbol ®, the legend Marca Registrada, the abbreviation "M.R." o the words "patentado" and "patente en trámite",

In practice, the Mexican Patent and Trademark Office has allowed the trademark and patent owners to replace the aforementioned markings with a notice published in a major newspaper.

5. Some pending issues

There are several issues that the courts will need to clarify in connection to the marking of products and services.

For instance, it is unclear what would be the consequence of marking a product with terms in a language different to Spanish (i.e. Registered Mark instead of "Marca Registrada" or patented instead of "patentado"). The obvious question would be if the use of such expressions in other languages would entitle the right holder to the same benefits than if the expressions were in Spanish. The provision makes no distinction about this subject, and the fact is that in Mexico there are other languages widely spoken besides Spanish.

Another unclear issue refers to the possible retroactive effect that the use of the marking or a published notice about a trademark or patent would have. For example, if the trademark owner would be entitled to claim damages from the period of time when, in spite of the existence of the trademark registration and a trademark infringement, the trademark owner had not announced yet by any means about the proprietary rights.

6. Other signs. For those not familiar with intellectual property law, the symbol © and the expressions copyright, "derechos reservados" and all rights reserved are not related to patents or trademarks, but to copyright. Their use and consequences are ruled by other statutes, which I may analyze in other future post.