Trademark and Patent marking under Mexican law

 

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. There is no specific symbol (equivalent to the ® for trademarks) in our country to indicate that there is a patent or pending patent application in Mexico.

 

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.

 

Failure to indicate or inform that the trademark used to identify a product or service is registered does not mean that the trademark owner would not be allowed to enforce the trademark rights. The proprietor may still file an administrative infringement action, but it would not be entitled to request the enforcement of preliminary measures, may not file a civil action for payment of damages and may not file charges due trademark counterfeiting.

 

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.

 

 

Damages claims due patent and trademark infringement

 

Section 221 Bis of the Mexican Industrial Property Law (IPL) provides that the owner of a patent or registered trademark (there are no common-law rights in Mexico) is entitled to claim from the infringer as damages and/or lost of profits at least 40% of the retail price of each infringing product sold by the defendant. The reason of such stipulation is not only to provide monetary relief to the right holder but also to punish the infringer.

 

Further, section 221 of the IPL states that the right to file a damages claim is independent from the administrative penalties that the Mexican Patent and Trademark Office (MPTO) may impose to the infringer of the corresponding patent or registered trademark.

 

For some years, the federal courts of appeals ruled that sections 221 and 221 Bis of the IPL allowed patent and trademark owners to file damages claims against infringers without a prior infringement decision issued by the MPTO*. The courts also ruled that it was valid to claim as damages and/or lost of profit the equivalent of 40% of the retail price of the infringing products sold without proving that the plaintiff suffered an actual damage or lost of profit or the consequential link between the infringement and said damages/lost of profits. Although the decisions were referred to trademark cases, the same provisions were applicable to patent infringement.

 

In 2003, the Segundo Tribunal Colegiado en Materia Civil del Primer Circuitoor Second Court of Appeals for civil matters in Mexico City decided a damages case due trademark infringement, and ruled that section 221 of the IPL demanded an earlier final infringement decision from the MPTO as a condition to file the civil action for damages.**

 

Given the inconsistencies between the courts of appeals, the Mexican Supreme Court, namely the Primera Sala or First Panel, intervened to set a binding ruling. The result was binding precedent No. 13/2004***.

 

It is necessary to state that the decision the Supreme Court contains many technical errors in connection to the intellectual property regulation, regrettably evidencing that the Judges that participated in the decision had not enough expertise in trademark and patent law.

 

In any case, the most relevant issue of the Supreme Court’s decision was a radical change about the conditions required to file a civil lawsuit for damages in cases of trademark and patent infringements.

 

Basically, the Supreme Court decided that it is necessary to have a final infringement decision from the MPTO before filing a civil action for damages and/or lost of profits. The Court also ruled that, in spite of the statutory minimum damages provided in the statute, the plaintiff had to prove in the damages trial that the infringement caused actual damages and/or lots of profit and the cause-effect relation between the infringement and the suffered damage/lost of profit.

 

In my opinion, the arguments and conclusions of the Supreme Court are incorrect and are not supported by the statutory provisions; further, such ruling works against the legitimate interests of intellectual property owners in Mexico.

 

I do not agree with the statement of a well-known Mexican business columnist that said that the decision of the Supreme Court made the MPTO stronger, given that the decision did not provide the MPTO with better tools to perform its job more efficiently. Actually the Supreme Court weakened the Mexican intellectual property system as a whole.

 

* Judicial Weekly Journal of the Federation and its Gazette, Courts of Appeals, Volume: XVI, August 2002, pag. 1323; and Judicial Weekly Journal of the Federation and its Gazette, Courts of Appeals, Volume: XIII, March 2001, pag 1797.

 

** Judicial Weekly Journal of the Federation and its Gazette, Courts of Appeals, Volume: XVII, March 2003, pag. 1680.

 

*** Judicial Weekly Journal of the Federation and its Gazette, First Panel, Volume: XIX, May 2004, pag. 365.

 

Some basics about copyright law in Mexico

 

1. Works are protected from the moment of creation

 

Works are protected by copyright from the moment they are created, materialized in any media and capable of being copied, regardless their merit or destiny. The work is protected when it is original or has certain degree of originality.

 

2. Copyright does not need registration

 

The registration of the work is not essential for copyright protection. Copyright is acknowledged without registering the work or fulfilling any particular formality. The registration of a work with the Public Copyright Registry, by itself, does not transform the registrant in author or make him holder of the copyright on the registered work.

 

The registration of a work originates a document that proves beyond any doubt the existence of the work at a given time, and the claim by the registrant of the copyright on the work. However, the registration is not the source of the copyright.

 

The aforementioned does not imply that registering a work is useless. On the contrary, it is an effective way to preparing evidence about the existence of the work, which may be extremely important in case of a dispute. Further, given that Mexican society is extremely formalistic and paper-oriented, the work has a higher status when registered. It is frequent that businessmen, authors and government officials (even from “specialized” agencies) acknowledge the existence of copyright only if the work is registered.

 

Registering a work with the Instituto Nacional del Derecho de Autor or Mexican Copyright Office (MCO) is relatively simple, and if done correctly, the MCO may issue the registration certificated in only four weeks.

 

3. Copyright provides two categories of rights: the personal rights and the economic rights

 

Copyright provides two different categories on rights: derechos morales or personal rights and derechos patrimoniales or economic rights. Only economic rights may be contractually assigned, provided that the parties comply with certain statutory formalities.

 

4. The purchase of the original work does not assign the copyright

 

Purchasing the original work does not imply in any way the acquisition of the copyright on the purchased work. The assignment of the copyright demands a specific written agreement with monetary consideration.

 

5. The existence of a work implies the existence of an author

 

In Mexican law, the existence of an individual identified as author is essential for the copyright; corporations cannot be authors, although they may be the copyright holders. Any entity claiming to be the copyright holder would have to demonstrate the chain of title from the author. This requirement may be particularly complicated for certain works, such as software, where it may be difficult to identify all the authors that had intervention in the work.

 

6. Ideas by themselves are not protected by copyright

 

It is necessary to materialize the idea through the work, and even so the subject matter of the protection would be the work, not the idea. The same idea may give place to different original works, and each one of them would have an independent protection. 

 

7. Trademarks, patents and copyright are not the same.

 

There are some similarities between patents, copyright and trademarks, but it is essential to clearly distinguish them one from the others. Each kind of protection gives their holders different privileges and disadvantages in relation to the others.

 

Against to the opinion of many reputed colleagues, I think that the chose of the legal way of protecting an intellectual creation may exclude the others; for example, if the shape of an industrial product is registered as an industrial design as provided by the Industrial Property Law, it automatically excludes the possibility of claiming copyright on the same design.