Registering the Independence Monument as a trademark

 

 

Last June 26, 2008, the influential newspaper “Milenio” (published in Mexico City) informed in the cover page the intention of the Government of Mexico City of registering as a trademark a drawing that reproduces the Winged Victory (widely known in Mexico as the “Independence Angel” or just the “Angel”) on the top of the Independence Monument in Mexico City.

 

As you may know, the Independent Monument is probably the best known landmark of Mexico City. The drawing that the Mexico City Government allegedly intents to register is already used in the government’s stationary and recent vehicle plates; now, the City administration wants to use the drawing in a campaign to boost tourism in Mexico City as well as on souvenirs, such as t-shirts, caps and cups.

 

Although I am in favor of the idea of using the monuments and the city symbols to promote tourism, the intention of registering as a trademark a drawing of the famous “Independence Angel” should not be taken lightly.

 

Of course, I am assuming that Mexico City’s government took all required measures to become the copyright holder of the drawing of the “Angel”. It is important to keep in mind that the purchase of the original work does not imply the transfer of the copyright associated to the work.

 

At first sight, the project of the administration of Mexico City seems quite questionable to me because two reasons:

 

1. The Government of Mexico City would be obtaining proprietary rights on a symbol of Mexico City, namely exclusivity rights on a representation of one of the most famous monuments of Mexico City.

 

If the Government of Mexico City gets the trademark registration on the drawing of the “Independence Angel”, using an identical or confusingly similar design on the same or similar goods to the ones stated in the registrations that the Mexico City Government would obtain would be trademark infringement.

 

In my opinion, all reproductions and images of the “Angel”, even a photographic picture, would be in risk of being considered confusingly similar to the registered trademark. If the Government of Mexico City registers the drawing of the “Angel” for clothing and headwear, it would automatically become the only one entitled to print the “Independence Angel” on t-shirts and caps and authorize third parties such use. As a Mexican citizen, I find it outrageous that the Government of Mexico City, or any other official entity, becomes the owner of the “Angel” as described above.

 

2. Another objection –purely technical- is related to the Federal Law of Artistic, Historic and Archaeological Monuments and Zones (Monuments Law). According to the law and a presidential decree, the Independence Monument and the “Angel” are Artistic monuments.

 

As a consequence, regardless that the copyright on the independence Monument and the “Angel” expired some years ago, the acknowledgment of such works as artistic monuments give the federal government the right to authorize or oppose the use in Mexico of images of the “Angel”, and even to collect a duty for giving the authorization.

 

On the other hand, the ownership on a trademark registration implies the right to license the registered trademark.

 

If the Mexican Patent and Trademark Office (MPTO) issues a trademark registration for a drawing of the “Independence Angel” in the name of Mexico City’s Government, it would automatically enter into a conflict with the authority of the Federal Administration in connection to allowing the reproduction and use of images of the “Independence Angel”, given that the City Government would have the right to license the registered trademark, regardless the position of the Federal administration.

 

From my point of view, there should not be a statute allowing the Mexican Federal Government to authorize and collect duties for the reproduction of artistic, historic and archaeological monuments not protected by copyright any long. However, it does not mean that registering a drawing of the “Angel” may not cause a potential conflict with the scope of rights of the Federal Government.

 

It would be quite interesting to know if the Government of Mexico City, or the author of the drawing of the “Angel” filed with the National Institute of Fine Arts an application for the authorization to the use of the drawing of the “Independence Angel”, and if there was any duty paid.

 

In any case, we will be alert to verify if the MPTO becomes aware of the technical problems that would imply registering a representation of the “Independence Angel” by the Government of Mexico City, and what the MPTO is going to do about it.

 

 

 

 

 

 

 

 

 

 

 

 

Oppositions to trademark applications in Mexico

 

  

The Mexican Supreme Court recently issued three non-binding precedents* concerning the right of third parties to oppose a trademark application when said third parties think that the issuance of the trademark registration may somehow harm their acquired rights.  

  

It is important to keep in mind that in Mexico, unlike other countries, there is no opposition procedure. The Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) does not publish trademark applications. If the MPTO issues a trademark registration and a third party believes it harms its rights, it has the possibility of filing a trademark cancellation action with the MPTO to remove the trademark from the registry. 

  

Although trademark applications are not published, a trademark search in the database of the MPTO may reveal the existence of unpublished pending trademark applications. If a person thinks that the approval of a pending application may somehow negatively impact their interests, it may file a written “opposition” by filing a document stating the reasons why the application should be rejected (similar to an amicus curiae although there is no lawsuit or court). 

  

Given the lack of a statutory opposition procedure, it is up to the MPTO’s examiner to take the opponent’s objections in consideration. If the opponent’s arguments do not convince the examiner, and the MPTO issues the trademark registration, then it may file the cancellation action. 

  

There was the case of an “opponent” that successfully filed an appeal because the MPTO did not pay attention to his arguments against the approval of a pending trademark application**. Such case opened the possibility for the courts to provide the right (not stated in the statute) of opposing a trademark application and intervening in the application procedure as a party.

 

However, the precedents from the Mexican Supreme Court, even if they are not binding yet, have enough authority to virtually end the discussion about if a third party may have intervention as a party in the trademark application procedure with the MPTO. Among other issues, the Supreme Court decided that third parties are not entitled to oppose the issuance of a trademark application (they may still file briefings though), and that such lack of right to oppose trademark applications is not against due process, given that such “opponent” is entitled to file a cancellation action against the trademark registration when granted, if it harms an acquired right of the “opponent”.

 

From my point of view, the most interesting side of the precedents of the Supreme Court would be their possible impact in the current practice of the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA). The appeals against the rejections of trademark applications by the MPTO due the existence of earlier applied or registered trademark applications/registrations owned by third parties (among other causes) are filed with the FCTAA. 

 

The appeal against the rejection of a trademark application would be decided in Mexico City. The FCTAA in Mexico City is divided in eleven “Metropolitan” Salas or Panels, of three judges each, and there is also a Highest Panel of eleven judges.

 

The opinion of most of the Metropolitan Panels of the FCTAA is that the owners of the registered/applied trademarks that were cited as anticipations in the administrative application procedure with the MPTO, and that caused the rejection of the appellant’s trademark application, have legal standing to intervene as a third interested party in the appeal against the rejection of the trademark application. Such intervention allows the third interested party even to file the final appeal (amparo) against the FCTAA’s decision if unfavorable.

 

My opinion has always been against the above-described FCTAA’s practice. The owner of the trademark registrations/applications cited as anticipation was not, and did not have the right to be, a party of the application procedure that ended with the rejection of the trademark application. If the FCTAA decides to invalidate the MPTO’s rejection and orders it to issue the trademark registration, such decision would not limit any of the rights of the prior trademark holder. If such trademark holder thinks that the issuance of the trademark registration harms its trademark rights, it may file a cancellation action against the trademark registration on whatever available grounds.

 

Now, the rulings of the Supreme Court somehow support my opinion, by confirming that third parties have no right to oppose the pending trademark applications, because the eventual approval of the application would not invalidate any of their existing rights. If the issuance of the trademark harms the rights of such third parties, there is a procedure available to defend them. Following these same ideas, it is not justifiable either that the FCTAA summons the owners of the trademarks cited as anticipation as third interested parties in the appeal against the rejection of a trademark application, because the eventual invalidation of the rejection would not limit or invalidate the earlier trademark rights of said third parties; if the issuance of a trademark registration as a consequence of the FCTAA’s decision harms a third party, there is a cancellation action procedure available to cancel the registration and defend the earlier trademark rights.

 

* 9a. Época; 2a. Sala; Semanario Judicial de la Federación (S.J.F.) y su Gaceta; XXVII, Febrero de 2008; Pág. 730; 9a. Época; 2a. Sala; S.J.F. y su Gaceta; XXVII, Febrero de 2008; Pág. 731; 9a. Época; 2a. Sala; S.J.F. y su Gaceta; XXVII, Febrero de 2008; Pág. 732.

 

** 9a. Época; T.C.C.; S.J.F. y su Gaceta; XXV, Enero de 2007; Pág. 2265.

 

 

 

 

 

 

 

 

 

 

 

The extension of life of patents in Mexico

 

The Mexican Constitution states that the exclusivity rights provided therein for inventors are “temporary privileges”. 

 

Without entering into the discussion about the language used in the Constitution, it is clear that one of the characteristics of the exclusivity rights on inventions is the temporality.

 

Temporality may vary according to each specific intellectual property right. For example, the term of a registered utility model is only 10 years counted from the filing date, while the term of a patent is, as a general rule, 20 years counted from the filing date.

 

In this post we will briefly discuss the extension patents, and specifically the only case of patents extension currently allowed by Mexican law, although probably without having that intention.

 

The general rule is that the life of a patent (20 years from the filing date in Mexico) may not be extended. The only exceptions are the so called pipe-line patents.

 

In general terms, the pipe-line patents are those that were filed under the scope of Transitory Section Twelfth of the Industrial Property Law of 1991 (1991 IPL) between June 28, 1991 and June 18, 1992. The claimed inventions of such patents were basically pharmaceutical and agrochemical entities; these inventions were not patentable under the old Inventions and Trademarks law of 1976. The 1991 IPL not only made new pharmaceutical and agrochemical entities patentable, but provided a retroactive effect, so new medicines, fertilizers and pesticides already patented in other countries were made patentable in Mexico, notwithstanding the fact that said medicines, pesticides and fertilizers were already of public domain in Mexico and lacked novelty.

 

Putting aside the discussion about if the above-described provision was fair or not, the fact is that the language used by the lawmakers was poor, and left the implicit possibility of extending the term of pipe-line patents by stating that: “the term if the patents issued under this section shall end on the same date of expiration of the patent issued in the country where the first application was filed, and in no case the term shall exceed 20 years counted from the date of filing in Mexico”.

 

What happened is that in some of the countries where the first application for a patent related to a Mexican pipe-line were filed, namely the United States and Japan, the patent offices of those countries started extending the term of some of such “sister” patents. Of course, under normal circumstances, the extension of the life of a patent in a country –i.e. the United States- would not have direct consequences in another –i.e. Mexico-. However, in the case of pipe-line patents, given that the statute stipulated that the Mexican patent would expire in the same date than the foreign patents issued in the country where the first application was filed, the term extension granted for the “sister” foreign patent automatically impacts the Mexican pipe-line patent with a term extension.

 

The Instituto Mexicano de la Propiedad Industrial (IMPI) or Mexican Patent and Trademark Office (MPTO) is the administrative authority in charge of issuing patents and registering trademarks, among other tasks. The MPTO has been severely criticized in Mexico by the manufacturers of generic drugs because of extending the life of Mexican patents. The generic manufacturers argue that extending the life of a Mexican patent because a foreign government decided to do so is illegal (if not outrageous) and benefits innovative pharmaceutical companies (none of them Mexican) against the interest of Mexican companies and Mexican consumers.

 

In favor of the MPTO, I must say that it has always been against extending the life of patents. When a patent holder has claim in its benefit the extension of a Mexican pipe-line patent as a consequence of the extensions already granted in other countries, the MPTO has systematically refused to acknowledge such extension and the applicant has had to appeal such rejections with the courts. As far as I am aware, the innovative laboratories have always prevailed in the appeals, but not thanks to the MPTO, who has tried to use all remedies and arguments available to avoid extending the life of a patent. It not the court’s fault either; Mexican courts only apply and construct the statutes, but they are not a source of law. If there is some responsible for this situation, it is the Mexican Congress and its lousy language.

 

Concerning this matter, there is a very interesting non-binding precedent from the Highest Panel of the Federal Court of Tax and Administrative Affairs identified as V-P-SS-629 that appeared in page 87 of the Journal of the Federal Court of Tax and Administrative Affairs, January 2005, No. 49, Year V, Fifth Era. We will review this decision in another opportunity.

 

 

 

 

A few tips about registering trademarks in Mexico

 

Mexico is a first-to-file country. Ownership on a trademark may only be obtained by registering the mark with the Mexican Patent and Trademark Office (MPTO).

 

Trademark applicants must be careful when filing trademark applications. Otherwise, the resulting trademark registration may be either too restrictive, too vague or in the worst-case scenario, completely useless to provide an effective trademark protection.

 

The following are a few tips for trademark applicants in Mexico:

 

What trademark should apply for?

 

a) First, the applicant must register those trademarks that are already being used in Mexico.

 

b) Second, the applicant should register those trademarks that are not yet being used in Mexico, but it plans to start using them in the short or medium terms. It is not necessary to prove use of the trademarks to obtain the registration and the trademark owner would have three years to start using them in Mexico before they become vulnerable to cancellation due non-use.

 

c) Third, the applicant may register trademarks that are not being used and there are no plans to use them, but it wants to block them for use or registration by third parties. If after the third anniversary of the registration the trademark owner maintains the interest in blocking the trademark, it may get around the vulnerability to cancellation due non-use by re-filing the application and obtaining a new registration.

 

What version of the trademark should be registered?

 

Most trademark applicants will have two or three options to register the trademark: (i) in standard block characters; (ii) characters with a design; (iii) a design without alphanumeric characters.

 

Mexican law provides that registered trademarks should be used as registered, or with minimum changes, provided that they do not affect the distinctiveness of the trademark.

 

With a few exceptions, the stylization of trademarks tends to change with time. Although a word+design trademark registration would give proprietary rights on the mark and the design, the trademark owner has to use the trademark as registered or with non material changes. A significant variation in the used stylization or design may cause the registration to eventually become vulnerable to a cancellation action due lack of valid use of the registered trademark.

 

Sometimes trademark owners find that because the evolution of the designs, the existing registrations are not any longer useful, and they have to file new trademark applications in order to guarantee an adequate protection, although giving up the filing date of the “obsolete” registrations; in a first-to-file system, giving up a filing date has some undesirable consequences in connection to the vulnerability of the trademark registration against different causes of cancellation, such as earlier use in the particular case of Mexico.

 

On the other hand, if the trademark is registered in standard block characters, the use of the mark in any letter style, size or color would be considered as valid use of the registered trademark for maintenance purposes. Therefore, the proprietary rights on the trademark will remain unaffected by the changes of the stylization of the mark.

 

Concerning design trademarks, most trademark practitioners agree that a design registration in black and white would provide a broader and more flexible protection than if claiming colors. Te general view is that a design registered in black and white allows the registrant to use the mark in any color combination, although it is important to remark that said opinion is not expressly supported by the statute or some judicial precedent.

 

Therefore, in an ideal scenario, the applicant should file applications for both the stylized and the standard character trademark. If the trademark involves a logo in colors, filing the applications with and without color claim would also be advisable.

 

Unfortunately, budget limitations often prevent trademark owners from ideal scenarios, and force them to make choices. Although each case is different and require a specific analysis, in most cases I would recommend filing the application for the mark in standard block letters. However, if the logo and/or stylization is highly distinctive and there is a high commitment to use the trademark without changes in the colors and fonts, the application should be filed for a word+design trademark claiming the colors. An intermediate solution would be filing the application for the word+design trademark in black and white.

 

Who should file the trademark application?

 

There are many reasons and situations that may impact the decision about who should be the trademark owner, such as corporate policies and tax advantages.

 

If we limit the perspective to the Mexican trademark law, there are two issues that demand special attention as for who should be the applicant:

 

a) Claim of use. Mexican law allows trademark applicants to claim the use in Mexico earlier than the filing date in our country. If the trademark registration is issued, the use claim would give the trademark owner some additional advantages in case of a dispute with third parties if compared to a registrant that did not claim earlier use.

 

Notwithstanding the above, claiming use may be tricky. The applicant is not allowed to claim in its benefit the earlier use in Mexico performed by a parent or sister company or a subsidiary. Although the use claim gives some advantages to the registrant, it also may allow third parties to challenge the validity of the trademark registration claiming that the date of commencement of use stated in the application is false. The burden of proof on such cases would be on the trademark owner, who would have to demonstrate that the stated date of first use is true.

 

b) Licensing. Lack of use of a registered trademark by the trademark owner for three consecutive years (after the registration) on at least one of the goods/services described in the registration would make the trademark vulnerable to cancellation due lack of use.

 

Although license agreements are fully valid and enforceable between the parties without any special formality, the use of the mark by a licensee would inure in the benefit of the trademark owner only if a written license is recorded with the MPTO; sister companies and subsidiaries would be considered licensees too for these purposes. There have been several decisions from the MPTO and the Federal Court of Tax and Administrative Affairs (FCTAA) that flexibly such a formalistic statutory requirement, there are no binding decisions yet.

 

Therefore, if the application is filed by an individual or entity that would use the trademark through a licensee or franchisee, it should take into account that it will have to eventually record a written license with the MPTO.

 

In which International Class should apply?

 

Mexico does not allow multiple-class applications. The applicant must file one application per International Class, according to the Ninth Edition of the Nice Classification.

 

This is an issue trademark applicants must be very careful about. If the examiner considers that the application includes goods/services of more than one International Class, she/he will demand the applicant to delete some of the goods/services from the application. If the applicant is interested in securing trademark rights on the deleted products or services, they would have to be included in a new application that would not have any sort of preference or priority arising from the original trademark application.

 

There are three considerations that may help to decide in which class(es) the trademark application should be filed in:

 

a) First, the trademark application must be filed for those goods or services where the trademark is already being used.

 

b) Second, the trademark application should be filed for those goods or services where the trademarks is not yet in use but there are plans to use it in he short of middle term.

 

c) Third, the trademark application may be filed for goods or services where there are no plans to use it, but the applicant wants to block third parties from using or registering the trademark in such services or products. As we stated before, the trademark registration would become vulnerable to cancellation due lack of use only after the third year after the registration of the mark. If it is a strategic mark, the registrant may re-file the application after the third year and obtain a new registration.

 

Although Mexican law does not allow “full-class coverage”, the current practice of the MPTO allows applicants to use the header of the international classes in the description, obtaining a virtually full-class coverage. So far, such broad protection is not limited to the products or services generically stated in the class headers, but also include products or services than may hardly be considered as implicitly included in the class header, such as “retail services” in the case of the class 35.

 

If the applicant seeks the broadest possible protection, it may combine a specific description with the class header; the use of the mark in only one of the stated services or products would be enough to maintain he registration.

 

Of course, the broadest the products/services description is, the higher the chances of entering into conflicts with third parties.