Press Room

 

TRADEMARKS. REGISTRATION IN TERMS OF ARTICLE 90, FRACTION XVI, OF THE MEXICAN INDUSTRIAL PROPERTY LAW

 

The current legal regulation establishes that a trademark is not registrable when it is identical or confusingly similar to another one which is in prosecution and that was previously filed, or to one that is already in force and registered, when this trademark applies for the same or for similar products or services. This regulation provides an exception to said rule which states that a trademark identical to one that is already in prosecution or to one that is in force can be registered provided that the applicant is the same for the previous trademark and that this new trademark is directed to similar products or services. That is, in order to obtain the registration of a trademark that is identical to a previously registered one, it is required that the same applicant files the application and that the trademark is filed to cover the same products or services. In this connection, according to a General Principle of Law which states that exceptions to the rules that are established by Laws are strictly interpretations which cannot be applied by analogy or due to a majority of rationale to situations that are different from the ones already considered, it can be concluded that the mentioned exception must be interpreted in a strict manner and must be applied only to the cases in which the trademark application is filed by the same applicant and not to individuals which are not the applicant, even when they exhibit a document through which the owner of the registered trademark expresses its consent in order that the trademark application in question is granted and that both belong to the same economic group; estimating the opposite, might imply the existence of two registrations for identical trademarks, obliging the Mexican Institute of Industrial Property to issue two Certificates of Registration to two different persons for the same trademark.

 

 

 

CREATION OF THE OFFICIAL DATABASE FOR MEXICAN TRADEMARK REGISTRATIONS OF THE MEXICAN CUSTOMS.

 

September 13th, 2011 - We are glad to inform you that on July 29, 2011, was published in the Mexican Official Gazette an amendment to the General Rules of External Trade, which among others creates the Official Database for Mexican Trademark Registrations of the Mexican Customs.

By means of the creation of this Official Database, all trademark holders in Mexico are entitled to request to the Customs Authorities to record the information of their registered trademarks in Mexico within such database, with the main purpose that such administrative authorities identify the importation of counterfeit goods that violate registered trademarks.

Before this amendment, Customs Authorities did not have an official database which can be consulted to review the information of trademark holders, instead, they used to work with an informal database containing information collected from past actions and details which trademark owners informally provided about their portfolios.

Therefore, with the creation of this Official Database, Customs Authorities can review the information provided by the trademark holders to identify the importation of counterfeit goods.

Please note that the Official Database will include, among others, the following information:

I. The protected trademark. 
II. The name, address, telephone and e-mail of the trademark holder and its Mexican agent.
III. The registration number.
IV. The tariff section (of commerce).
V. A detailed description of goods, including specifications, and other data to identify it. 
VI. Expiration date of the trademark registration.
VII. Name of the importers.
VIII. Photographs of the goods.

Even though the request of recording the information of a particular trademark into the Official Database is optional, the request of recording the information of trademark registrations will begin on January 2, 2012.

The above, since up to date Custom Authorities are still developing the Official Database and the requirements that trademark holders must comply in order to request the recording of their information.

 

 

 

IMPORTANT INFORMATION WITH RESPECT TO TRADEMARK PRIORITY RIGHTS IN MEXICO.

 

July 15th, 2011- This is a brief note just to inform you that due to a recent amendment to article 60 of the Regulations of the Mexican Industrial Property Law, it is no longer necessary to submit a certified copy of the priority documentation for trademark applications when claiming priority rights.

Therefore, in order to claim priority rights for future trademark applications, we will only need the following:

          •    Serial Number of the foreign application
          •    Filing date of the foreign trademark application
          •    Country of origin

It is important to bear in mind that this amendment ONLY applies to trademarks and that patent applications will not be benefited by this amendment.

This measure will certainly be helpful for our clients since it will avoid time and cost in the obtention of certified copies and the procedure will be simpler than the former one.

We hope that you find the aforesaid information useful. However, should you have any doubts or need any further clarification, please let us know.  

 

BC&B RACING TEAM IN NASCAR MEXICO

For the 2011 NASCAR Corona Series season - the most important car racing event in Mexico - Becerril, Coca & Becerril, S.C. will be the proud sponsor of driver Rodrigo Marbán, who will be behind the wheel of car #12, facing the challenges that this series will bring to him in every racetrack.

Follow with us the season finale, round 14, which will take place in Mexico City on November 27th, 2011. This race will be broadcast at 15:30 Central on Foro TV Mexican Channel and at 20:00 Central on Speed Channel Latin America.

For more information on our driver, and the NASCAR Corona Series in Mexico, you can access the following links:

NASCAR Mexico                  Rodrigo Marbán

BC&B EARNS "CONTRIBUTOR MOST READ" AWARD ON THE MONDAQ.COM WEBSITE

 

BC&B was once again the contributor most read in Mexico on the MONDAQ.COM website.

Take a peek: