As the old Spanish saying goes: “There is not a day that won’t come or a deadline you won’t reach”, sooner or later we would see the first registrations of non-traditional trademarks given by the Mexican Institute for the Industrial Property (In Spanish, Instituto Mexicano de la Propiedad Industrial, IMPI).
Before August 10, 2018, our Industrial Property Law had a very different and rather limiting definition of trademarks as well as the fundamental features of traditional trademarks.
Thanks to the entry into force, of the last reform to this Law dated May 18, 2018, “non-traditional trademarks” are now in the picture, encompassing sound, smelling, holographic trademarks as well as trade dress, in Mexico.
According to a release from the same Institute, four registrations were granted to “non-traditional trademarks”, among which there is a smell mark for bamboo-smelling paint; another similar case was the smell of the dough used in an important toy company, defining the smell as “a combination of sweet with a fragrance with notes of vanilla, cherry and the natural smell of a wheat-flour-based dough”, as stated in the application from the trademark. Also, another great example of a sound trademark that a Mexican audience can easily recognize, is the one belonging to a coffeeshop/restaurant chain consisting of the sound of a spoon tapping three times against a cup; last but not least, the first registration to trade dress was given to the makers of a plant pot with the shape of an action figure.
The great difference this law amendment makes lies mainly in the definition established in its 88th article, which broadens the concept of a trademark; now it is not only visible signs and features that make a trademark what it is, as it used to be; now, trademarks are defined as any perceivable sign through the senses and susceptible of being represented in any way that allows us to determine the clear and accurate object of legal protection, setting forth a wide variety of combinations and distinctive signs to protect.
This is definitely quite a novelty for Mexican law; yet, countries like the the USA or members of the European Union have plenty of experience with this type of brands, for which foreign right bearers who may already have experienced this kind of trademark protection may in the future easily duplicate such strategies in different jurisdictions; as of now, they can do it in Mexico.
Then, what can we protect as a trademark? Law is clear in defining distinctive features or signs that can go under its protection:
Names, letters, numbers, figurative elements and color combinations, as well as holographic signs;
Tridimensional shapes;
Commercial names, corporate names, business names;
A natural person’s name;
Sounds;
Smells;
All operational elements; elements of an image, including, among others, size, design, color, layout and position of the shape, labeling, packing, decoration or any other that when combined with the previously mentioned make products or services recognizable.
It is clear that the acquisition of any of these types of trademarks is subject to all the rules contained by the Law and its internal regulations, as well as to al the criteria established by the Institute. Once the trademark application is filed, among other things, the Institute will examine its formal requirements to make sure the content of the application sheet is within the parameters of the above mentioned law; afterwards, there is a thorough second examination through which it can be guaranteed that the distinctive sign won’t incurre among those prohibited by the law. If both filters are successfully overcome, the Institute will grant the trademark of interest; otherwise, the application will be refused.
With nearly 400 visible application in the external inquiry system of the Institutes (MARCANET) —considering only non-traditional trademarks— since August last year, these 4 granted registrations are the first step towards a new era in protection.
Let’s think of this Law amendment and the granting of registrations carried out by the Institute as a new form of protection to traders and service providers from Mexico to the outside and to those foreigners who want to enter our market with as much protection as possible.
In FLOCAR LAW, we help you with the filing of traditional and non-traditional trademarks so that you can safely import to our country under the protection of the best strategies.
For any question or comment you can contact me on my personal Twitter profile: @armandoflores8 or, you can send an E-mail to: aflores@flocarlaw.com.
Armando Flores.
Partner
FLOCAR LAW
