Trademark searches in Mexico

 

In a first-to-file country, such as Mexico, one way of foreseeing if a trademark is available for use and registration is conducting a trademark search with the databases of the Mexican Patent and Trademark Office (MPTO).

 

There are two main databases that may be consulted in a trademark search: the Industrial Property Gazette that the MPTO issues on monthly basis, and the online phonetic database of the MPTO.

 

Foreign entities that offer search services usually obtain the information from the Industrial Property Gazette, while local agents often use the online database. Unlike the trademarks database of the USPTO or the OHIM, there is no free access** to the trademarks database of the MPTO to conduct searches;  it is necessary to have a prepaid account. **(See important update below).

 

A search conducted using the information stated in the Industrial Property Gazette will provide basic information about trademark registrations, such as the mark, the device (if applicable), registrant’s name, address and nationality, the filing date and application serial number, the registration number and the date of publication in the Industrial Property Gazette.

 

The phonetic search would provide all the above-information (although many agents fail to state the date of publication in the Gazette), plus the location of the applicant’s premises (as stated by the applicant), the next renewal due date, and the date of commencement of use of the trademark in Mexico, if the applicant claimed it.

 

Further, given the lack of opposition procedure in Mexico, trademark applications are not published. The Industrial Property Gazette only states information about registered trademarks, while the on-line database of the MPTO also provides data about pending applications that may also obstacle a later trademark application.

 

Foreign searching companies would often state in the report that there is no deadline to file an opposition. Technically speaking, the statement is correct, since there is no opposition at all, but it also may be misleading. Mexican trademark registrations may be cancelled, but there are statutory deadlines to file the cancellation actions, and the deadline may vary depending on the cause of cancellation.

 

Nevertheless, when conducting device searches, the foreign searching companies may offer some advantages. The on-line database of the MPTO does not allow agents to search for devices, and such searches must be requested by filing s written petition with the MPTO; the MPTO usually takes from three to six weeks to deliver a report; searching companies may produce results in a shorter term, although, depending on the database they use, there may be some important information missing.

 

The results of the trademark search conducted with the on-line database of the MPTO tend to be very accurate, but should not be regarded as 100% reliable. In some unusual occasions, the search fails to reveal the existence of trademarks very similar to the searched one. Further, the MPTO takes about ten days to update the database with the information concerning the new trademark applications.

 

On a related matter, although there are no common-law rights in Mexico and the first user of a trademark would not be acknowledged as proprietor, such user may cancel a Mexican registration for an identical or confusingly similar trademark, applied to the same or similar products or services, based only on the earlier use of the mark, either in Mexico or abroad. A typical trademark search would not show the existence of such potential adversaries or disputes.

 

** Update: Starting June 1, 2009, the online database of the Mexican Patent and Trademark Office is available for free to any person with Internet access.

Ownership on Works and Inventions by Employees in Mexico

 

Every day, the intellectual property assets of businesses increase their importance. They are not, and should not, seen any longer as a by-product, but as a fundamental asset for the survival, well-being and prosperity of businesses.

 

Employees and their activity are a very important source of intangible assets, so adopting a clear, well supported and fair policy in connection to the intellectual property generated by employees should be considered as strategic in any innovative business. Further, an inadequate intellectual property policy inside a business organization may lead to potential liability issues and reduce the value of the company.

 

Mexican copyright and patent law are similar to the laws of other jurisdictions concerning the exclusivity rights stipulated for the right-holder. However, as far as for inventions and works developed by employees are concerned, the regulations may be surprisingly different. Further, Mexican lawyers unfamiliar with intellectual property laws often confuse inventions and works.

 

As a preliminary issue, Mexican law makes a clear distinction between works protected by copyright and inventions/designs protected by the patent law. There are some grey areas, especially in the case of industrial designs, where the border between works and inventions is not clear from a substantive perspective. However, the applicable statues (the Industrial Property Law and the Federal Copyright Law) explicitly state that works are not protected by patent law, and copyright law excludes inventions from copyright protection.

 

 

Inventions by employees

 

The Federal Employment Law provides that the employer owns the intellectual property on all inventions developed by employees, provided that the development of inventions was one of the objectives of the employment relation. If the employment agreement is silent about who should be the owner of the intellectual property rights on the invention, but it states that making inventions is one of the purposes of the employee, then the right holder is the employer.

 

The employee has the right for an additional compensation only if the invention benefits the employer in such a way that the regular wage of the employee is not proportioned with said benefit. The parties must agree on the compensation the employee is entitled to, and in the lack of an agreement, the labour courts will decide.

 

In all other cases (i.e. inventions developed by employees without having such responsibility provided in the employment contract using the employer’s resources) the proprietary rights associated to the invention belong to the employee; the employer only has a right of first refusal in case the employee decides to assign the right to file the patent/design application or the corresponding patents, design registrations or patents/design applications.

 

Works by employees

 

Mexican copyright is very liberal about what may be subject matter of copyright protection, and extremely author-protective. As a consequence, it has many restrictions regarding the ownership of intellectual property rights on works by parties different from the author.

 

There are four preliminary issues that need to be addressed for better comprehension of this matter:

 

First. Mexican copyright law protects works regardless their destiny or merits. Therefore, designs that are intended to give industrial products a new ornamental appearance may be protected by copyright, regardless the provisions concerning industrial designs.

 

Second. It is important to distinguish between “derechos morales” or personal rights and “derechos patrimoniales” or economic rights. Personal rights are related to the special acknowledgment that the author deserves as such and the relation between the author and her/his work. It includes, among others, the right to disclose the work, the right to be acknowledged as author, the right to modify the work and the right to oppose the mutilation or modification of the work.

 

Economic rights are related to the use of the work, and include the right of copying and authorizing the public communication of the work, among others.

 

Third. As a general rule, the author may only contractually transfer the economic rights. In the case of works made by employees, the employer may be entitled to the economic rights, and to the right to disclose the work.

 

Fourth. Copyright is fully protected and enforceable, at least in theory, without registration or any particular formality.

 

Having said the above, the employer is entitled to be acknowledged as the copyright holder of the works developed by the employees, only if there was an individual employment contract (opposed to the collective contracts executed with unions) in written with the employee. Further, the employment contract must explicitly state that all economic rights related to the copyright on the work belong to the employer; otherwise, the law will assume that 50% of the economic rights belong to the employer and 50% to the employee.

 

If there is no written employment agreement or if it is silent about who would be the copyright owner of the works developed by the employee, then the full copyright holder would be the employee.

 

As an exception, copyright on software developed by a employee as part of its duties belong to the employer, regardless the existence of a written individual contract or that the contract is silent concerning the percentage of the copyright ownership that would belong to the parties.

 

There is a fundamental difference between the provisions of the Federal Employment Law regarding inventions and industrial designs, and the Federal Copyright Law in the case of works. The transfer of the intellectual property on inventions and industrial designs from employee to employer is implicit due a statutory provision. In the case of copyrightable works, it requires a contractual explicit stipulation. In both cases, there is no actual assignment between employer and employee; the acquisition of the IP rights by the employer is automatic.

 

Assignments

 

If the parties decide to execute an assignment document to ease the filing of a patent, industrial design or copyright application for the employee’s invention/design or work, they should also take into account some special provisions stipulated in the Mexican Copyright Law.

 

The statute provides that copyright assignments should be always be temporal, with the exceptions of software, literary, musical and audiovisual works, and works to be represented on a stage. If the parties do no state a term, the term of the copyright assignment is five years only. The parties may freely stipulate a copyright assignment for up to fifteen years. Copyright assignment for more than fifteen years is valid only if the nature of the work or the investment required to use it justify such term.

 

Therefore, it is necessary to be extremely careful when drafting the intellectual property provisions in employment contracts for Mexican workers, and even seek advice from a specialized lawyer. Otherwise, there is the risk of dangerous gaps and voids on the intellectual property ownership that may negatively impact not only the employer’s operation, but also its customers and clients.

Is it necessary to file evidence of use of a trademark in Mexico to keep it alive?

 

There are two frequent questions I receive from foreign colleagues and Mexican businessmen regarding maintenance of Mexican trademark registrations.

 

One is if it is required to file evidence of use of a trademark with the Mexican Patent and Trademark Office (MPTO) from time to time in order to keep a trademark registration alive. The answer is ‘no’.

 

The other question is: If it is not required by the statute, why some Mexican trademark lawyers insist in this filing every three years?

 

Since 1991 it is not necessary to file statements or evidence of use of a trademark with the MPTO in order to keep a trademark registration in force. It does not mean, however, that stopping using a registered trademark would not have negative consequences. If the use of a registered trademark is interrupted for three consecutive years or more, the registration would become vulnerable to a cancellation action by a third party with adverse legal standing.

 

Notwithstanding the above, when renewing a trademark registration (Mexican trademark registrations are renewed every ten years), the attorney of record must stated under oath with the MPTO that the trademark is being used on at least one of the goods or services covered by the registration, and that the use of the trademark has not been interrupted for three consecutive years or more (specimens are not required). Therefore, a registered trademark that has not been used for three consecutive years should not be renewed.

 

Some Mexican colleagues state that filing proof of use every three years with the MPTO would prevent third parties from filing a cancellation action on grounds of lack of use, although such opinion lacks of support on the statute or some precedent from the courts.

 

The effects to filing evidence or statements of use from time to time would be limited to dissuade third parties from challenging the trademark registration, if the trademark owner shows that it would have evidence to defend the registration if it becomes necessary. Therefore, and assuming it is not a trademark renewal, filing a statement of use (even under oath) would not provide any actual benefit for the trademark owner. In any case, the MPTO would issue an office action, but it would only be an acknowledgement of receipt; it would not acknowledge that the registrant proved the use of the mark.

 

If a third party files a cancellation action on grounds of lack of use, the trademark owner would have to prove that the trademark has been used in Mexico, either by the registered owner or a recorded licensee, regardless the evidence of use previously filed.

 

If a trademark owner is interested in filing some evidence of use in order to discourage third parties from challenging its trademark registration on grounds of non-use, we suggest filing evidence that would actually show the use of a trademark in Mexico, as in a cancellation action; a label or an affidavit of use would not be effective.

 

It is important to be very careful when filing proof of use with the MPTO. Filing wrong or insufficient evidence may actually encourage a third party to file the cancellation action due non-use instead of dissuading it.

 

When the filing of the evidence effectively discourages a third party from challenging the registered trademark, the trademak owner saves of thousands of dollars in attorneys fees, preparation of evidence and uncertainty about the outcome of the action. Unfortunately, the benefit is extremely difficult to measure.