Before the amendment, if an applicant wanted to claim priority, it had to state the application serial number of the claimed priority in the Mexican application and file a certified copy of the priority application with the Mexican Patent and Trademark Office (MPTO) within a three month term counted from the filing of the trademark application in Mexico in order to have the priority claim acknowledged.

Now, the applicant only has to state the priority application serial number in the Mexican application – and enter the government fee for the acknowledgement of a priority- to secure the priority right.

If the Mexican trademark application lists more products than the ones stated in the priority, the priority would be acknowledged only for the coincidental goods. If an applicant claims a non-existent priority, the trademark registration may be declared invalid.

The new simplified rule for priority trademark applications only benefits applications filed after June 11, 2011. This new rule should significantly reduce the cost of filing trademark applications with priority claim, given that the trademark agent will have one less deadline to worry about.

Regrettably, while the procedure for Mexican trademark applications is evolving to require fewer formalities, the patent application procedure has virtually remained the same since 1994.

For example, it is no longer necessary to file a power of attorney with the MPTO when filing a trademark application, but such formality has been maintained for patent applications. Now, the applicant does not have to file a certified copy of the priority application in the case of trademarks, but the formality persists for patents.

Further, the amended Rules expressly state that if the applicant files the priority document without translation, the applicant has a two months term to file the Spanish translations and the MPTO has not have to issue an office action requesting the translation; otherwise, the priority claim would not be acknowledged. However, the precedents from the Federal Court of Tax and Administrative Affairs state that it is illegal for the MPTO to refuse acknowledging a priority claim because the applicant did not file the Spanish translation of the document within the two months term, if the MPTO did not issue an office action requesting the translation ^1..

The MPTO has not explained the reasons why the procedural rules and provisions regarding patents are not following the less formalistic trend of the trademark-related procedures. I do not see a technical reason, and I may only speculate that the people in charge of patents and the people in charge of trademarks believe that, rather than a Mexican Patent and Trademark Office, there is a Mexican Patent Office and a Mexican Trademark Office.

¹ Precedent “Patent. The Auhtority has the obligation to request the translation that was not filed with the patent application” – Page 463, Revista del Tribunal Federal de Justicia Fiscal y Administrativa or Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Volume 26, February 2010 (VI-TASR-EPI-222).

The amendments corrected a few inconsistencies between the Rules and the Industrial Property Statute (the Statute), adjusted a few regulations to follow some repeated rulings of the Federal Court of Tax and Administrative Affairs and simplified the acknowledgement of priority claims in trademark matters.

CHANGES TO THE RULES OF WORD MARKS

I think that the most important amendment to the Rules refers to word marks.

In Mexico, only graphic symbols are acknowledged as trademarks, thus only graphics may be registered to obtain exclusivity rights on them. Depending on the claims stated in the application and the characteristics of the mark, there are four kinds of registered trademarks: nominativas or word-marks, innominadas or design-only marks, mixtas or word+design marks and tridimensionales or three-dimensional marks.

Word-marks consist of literal elements only, such as a word, a phrase or a combination of numbers and/or letters. One issue that neither the Statute nor the Rules clarified was if symbols, such as &, @ and +, and written signs that do not exist in Spanish, such as the ‘ (apostrophe), could be registered as part of a word-mark.

The amendment to the Rules of June 10 seeks to clarify, in a restrictive and confusing way, what can be included in a word mark.

The amended last paragraph of section 56 of the Rules, now states that “word marks and slogans may only include letters or words taken from the roman alphabet, western Arabic numbers and those written signs that would help the correct understanding of the mark”.

What surprised me more of the amendment, was the used of the expression “Roman alphabet”. In Mexico the official language is Spanish, and Spanish speakers use the Spanish -not the Roman- alphabet.

I believe that the new section 56 of the Rules now clearly exclude symbols such as &, #, @, mathematical symbols (+, /, >, <) and currency symbols ($, €), among others, from being included in trademark applications for word-marks.

Further, the amended section 56 of the Rules makes it very clear that word marks may not be expressed in characters taken from non-Latin alphabets, such as Greek, Hebrew, Chinese, Arabic, Cyrillic, etc.

The reform does not prohibit the registration of trademarks that include mathematical symbols or letters from non-Latin alphabets. However, such trademarks may not be registered as word marks, given that the Rules now implicitly consider such characters as a sort of drawing. Therefore, trademarks with non-Latin Characters or other symbols as the ones explained above have to be filed as design-only marks (innominadas) or word+design (mixtas) marks.

This is a quite relevant change. If a trademark is registered as a word-mark, the trademark owner may use it in any font, size and color, and such use would be regarded as use of the registered trademark for maintenance purposes. If a trademark is filed as word+design or design-only, the registrant must attach a print of the trademark to the application; if the registration is issued, the trademark owner must use the trademark as registered, so the use may be acknowledged as valid use of the registered trademark for maintenance purposes, including renewal.

I did not understand the distinction in the amended section 56 of the Rules about “written signs that would help the correct understanding of the mark”. What is the point of the distinction? If there are written signs that would help the correct understanding of the mark, then there could be written signs that would not help the correct understanding of the mark, or worst, that help the incorrect understanding of the mark?

My opinion is that there are no written signs included in the mark that help the correct understanding of the trademark. Written signs included in the mark are not intended to helping understanding the mark; they are part of the mark, thus all orthographic signs should be allowed to be included in word-marks. I am sure that among the written signs that will not have a problem to be part of word-marks are the punctuation marks, the exclamation (¡ !) and interrogation points (¿ ?), the diaeresis and the accent, although doubts and objections about the dash and the apostrophe are likely.

Other unclear, and somehow odd, issue involves trademarks that evolved from the Latin alphabet but do not actually belong to it, i.e. “Æ”, “Ç”, “Ø”, etc. Given that a word mark may only include characters from the Roman alphabet, the first reaction could be that a trademark that includes such letters may not be registered as a word-mark.

However, there are letters in Spanish that evolved from the Roman alphabet, but do not actually belong to it, such as “J”, “W” and most notably the “Ñ”. There is no question that the “Ñ” belongs to the Spanish alphabet, but undoubtedly is was not a part of the Roman alphabet; further, the classic Latin alphabet did not include the “J” and “W”.

Certainly, it would be ridiculous stating that, as a consequence of the amendment of section 56 of the Rules, words that include the “Ñ”, “W” or “J” may not be registered as word-marks any long. Then, the new section 56 of the Rules should be understood in the sense that all words including letters that evolved from the Latin alphabet should be allowed to be part of word-marks, naturally including the “Ñ”, “W” and “J”, but also “ß”, “Å”, “Ŝ”, “Ų” and all other letters that do not exist in Spanish but in other languages that that evolved from Roman characters too.

I am not sure if the Mexican Patent and Trademark Office will use a narrow concept of “Roman Alphabet” (excluding the registration as word-marks of trademarks that use the “Ñ”, “J” or “W”) or liberal (including each and all letters that developed from Roman, regardless if they belong to the Spanish alphabet or not), but it would not the first time that a rule or statutory provision is constructed in a way different of what the Government or the Congress meant. As example, there is the case of the extension of life of pipe-line patents (see The extension of Life of Patents in Mexico)and the inclusion of formulation patents in the linkage system situated in section 67 Bis of the Rules (see The Mexican Supreme Court expands the linkage system to prevent patent infringement). It would be odd and regretful, but I would not be surprised if in the future, Wikipedia becomes the authorized source to know what trademarks may be registered as word-marks in Mexico and which ones do not.

The Mexican government would have avoided problems if, instead of using the phrase “Roman alphabet”, they would have used the expression “Spanish alphabet”.

Another topic that makes me uneasy is the reason behind the restrictive amendment to section 56 of the Rules. Why the Executive Branch decided to restrict the possibility of obtaining word-mark registrations to those trademarks using Latin characters only? In a global economy, especially in such an open economy as the Mexican, it does not make much sense to close the possibilities of giving full protection to trademarks originated in other nations just because they are written different.

Further, why denying registration as word-mark of trademarks that use non-orthographic characters (the +, @ and &, for example)? I do not see a technical reason for narrowing the kind of characters that a word-mark may include, especially in the case of symbols that are widely used in Mexico.

I also think that the Administration lost a good opportunity to clarify if it is valid disclaiming words, phrases or letters from word-mark trademark applications. It also waste the opportunity of explaining whether the registration of a design-only or word+design trademark filed in black and white or grays gives the trademark owner the right to use the registered design in any color or color combination, in spite of having being registered in white and black or grays.

In general, I am in favor of any amendment to the Rules or the Statute that provides more certainty about the procedures and substantive rights, even if I do not like the amendment itself. Therefore, the upside of the amendment of section 56 of the Rules is that now it is clear that trademarks including or consisting of non-orthographic symbols and signs, and marks written in non-Latin characters cannot be registered as word-marks in Mexico. Now we have to clarify, and probably the courts will do it, how narrow or liberal is going to be the concept of “Roman Alphabet” that Mexican lawyers will have to use in trademark law to determine if a trademark may be registered as word-mark.

Finally, an issue that should concern Mexican practitioners is the potential conflict between the new Mexican Rules and the Paris Convention, in connection with priority-based trademark applications for word-marks that include letters or signs that may not be registered in Mexico, under the amended Rules, as word-marks.

There seems to be an increasing number of cases related to three-dimensional trademark applications, resulting in new precedents related to these marks. In 2009, the Fourth and Ninth Courts of Appeals in Mexico City published a couple of precedents** regarding the requirements that three-dimensional trademarks must fulfill to be registrable in Mexico. Further, the Specialized Chamber in IP Matters of the Federal Court of Tax and Administrative Affairs published a precedent*** regarding the scope of rights provided by the registration of three-dimensional marks.

There have been a lot of discussions about the requirements to register three-dimensional trademarks, not only in Mexico but in many other countries and regions. On one side, companies and business are trying to differentiate themselves from competitors not only by developing new packages and containers and registering them as trademarks, but also by attempting to protect the shape of their products by registering them as a trademark. On the other side, there is a clear tendency of many Trademark Offices -including the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO)- to reject the registration as a trademark of the three dimensional shape of an object when the shape has a functional character.

This post will be mainly about the possibility of registering the three-dimensional shape of a product as a trademark in Mexico.

In the first place, there is no doubt that Mexican law allows the registration, as a trademark, of the shape of a product. Section 89, paragraph II of the Industrial Property Statute stipulates that three-dimensional trademarks may be registered in Mexico; and section 53 of the Rules of the Industrial Property Statute explicitly provides that the shape or presentation of a product may be registered as a trademark, among other three-dimensional marks such as packages and containers.

Notwithstanding the above, not all three-dimensional marks can be registered. Section 90, paragraph III of the Industrial Property Statute prohibits the registration of “three-dimensional shapes that are of public domain or that have become of common use, and that do not have originality to make them easily distinguishable, as well as the usual and common shape of the products and the one imposed by its nature or industrial function”.

Therefore, the shape of a product is registrable as a trademark, if: (i) such shape is original enough to allow it to make it easily distinguishable, (ii) it is not of public domain; (iii) it has not become of common use; (iv) it is not the usual and common shape of the product to be identified by the mark and; (v) it is not imposed by the nature or industrial function of the product.

With some many “if’s”, obtaining the registration of the three-dimensional shape of a product can be extremely difficult in Mexico. In the case of the shape of a product, no matter how original it may be, I cant’ imagine a design completely voided of functional characteristics, and the presence of a functional characteristic may be a cause of rejection of the trademark application.

Of course I am not saying that it is impossible to secure IP rights for the shape of a product. Industrial design registrations are often used to secure exclusivity rights for the shape of products. The issue I want to raise is directed to the trademark aspect of three-dimensional form of a product, and if it is actually possible to register it as a trademark while avoiding all the restrictions that the statute provides.

For example, in the field of industrial designs, it is possible to register the three-dimensional design of a light bulb, provided that the design is new and substantially ornamental. I highlight the expression ‘substantially’ because under Mexican law three-dimensional industrial designs have always to be referred to a specific industrial product. Therefore there has to be a minimum or tolerable degree of functionality in the design; otherwise, there would be no industrial product at all to apply the design to. In any case, it is clear that the exclusivity rights that the design registration provides do not include the functional or technical characteristics of the product or design.

However, in the field of trademarks, the shape of a light bulb, no matter how original and distinctive it might be, has to be determined in some degree by its nature and function. A complete absence of functionally in the product’s shape would result in a useless product or in no product at all.

Therefore, the consequence of claiming that the shape of a product has to be absolutely voided of functional characteristics in order to be registrable as a three-dimensional trademark (in my opinion, this has been the MPTO’s position in the last years) would be that, in practice, it is not feasible to obtain trademark protection for the three-dimensional design of a product itself, no matter what the statute or its rules provide whatsoever.

I believe that the current position of Mexican authorities about the registration as trademark of the shape of products is too dogmatic, even against the law.

In an effort to avoid the rejection of applications for the three-dimensional marks on grounds of functionality or lack of distinctiveness, some applicants added literal and figurative elements to the three-dimensional mark subject of the application. These three-dimensional trademark cases with additional bi-dimensional elements included containers (the precedents from the Fourth and Ninth Courts of Appeal in Mexico City make specific reference to the shape of containers) and shapes of products.

The main argument behind adding intrinsically distinctive literal and figurative features to the three dimensional trademark was that the trademark must be analyzed as a ‘whole’, without splitting its bi-dimensional and three-dimensional elements (“The whole is other than the sum of its parts”). The applicants claimed that, if as a result of the examination of the trademark as a ‘whole’, it was reasonable to conclude that the shape of the product or container plus the literal and figurative bi-dimensional elements, allows an average consumer to distinguish the product from other of the same kind, then the trademark is registrable, and the exclusivity rights would comprise the three-dimensional design and the literal and figurative elements.

Eventually, different courts of appeals issued contradictory decisions. The contradictions caused the intervention of the Supreme Court and the publication of a binding precedent in April 2010.

Basically, the Supreme Court ruled that there was no obstacle for the filing of a trademark application for a three-dimensional mark that also includes literal or figurative elements. However, the decision also provides that the examination of the registrability of such a trademark must be conducted in two stages. In the first stage, the examiner must consider the three-dimensional aspect of the mark only, excluding the bi-dimensional features. If the conclusion of the examiner is that the three-dimensional trademark is registrable, then he/she may start the second stage of the examination and consider the literal and/or figurative aspects of the trademark.

The decision expressly states that if the three-dimensional feature of the mark is not intrinsically registrable, then the trademark application must be rejected, without need of considering the bi-dimensional elements that the trademark may include.

The decision of the Supreme Court only provides guidelines about the examination of three-dimensional trademarks. It does not provide any restriction about the intrinsic registrability of the shape of a product as a trademark.

Personally, I am against to the two-stage examination of three-dimensional trademarks provided in the Supreme Court’s decision. However, it is a binding precedent that confirms the way that the MPTO has examined three-dimensional trademarks in the last years. Therefore, it is most likely that the somehow hostile approach to this kind on non-traditional trademarks (especially to the ones that protect the shape of products) will continue in Mexico.
* Judicial Journal of the Federation, Ninth Era, XXXI, April 2010, page 430.

** Judicial Journal of the Federation, Ninth Era, XXIX, January 2009, page 2769; and Judicial Journal of the Federation, Ninth Era, XXIX, March de 2009, page 2811.

*** Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Year II., No. 24, December 2009, page 259.

The Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs and the Tribunales Colegiados de Circuito or Federal Courts of Appeals will be closed from December 16, 2010 to January 2, 2011. The Juzgados de Distrito or Federal District Courts will remain open.

As in previous years, the MPTO some online services (including the databases Vidoc, Marcanet and) could not be available all the time during the holidays.

Happy Holidays!

In my opinion, the ad-hoc procedure is too burdensome for trademark owners, causing a very small number of applications for the ad-hoc acknowledgement of trademarks as well-known or famous in Mexico. I also stated that the limited benefits of the ad-hoc acknowledgement of a trademark as well-known and the high could also discourage applicants from applying for such acknowledgment.

Although I still maintain my opinions about the ad-hoc procedure, after I wrote the post, the Mexican Patent and Trademark Office have issued a small number of ad-hoc acknowledgments of well-known and famous trademarks.

The following trademarks have been acknowledged as famous in Mexico, through the ad-hoc procedure:

Trademark: “ANDREA”
Date of decision: November 4, 2008
Application serial No. 2197/2007
Owner: Fábricas de Calzado Andrea, S.A de C.V.
Status. Famous

Trademark: “CINEPOLIS”
Date of decision: November 20, 2008
Application serial No. 1256/2008
Owner: Cinemas de la República, S.A. de C.V.
Status: Famous

Trademark: “INTEL”
Date of decision: July 31, 2009
Application serial No. 1577/2008
Owner: Intel Corporation
Status: Famous

Trademark: “RED BULL”
Date of decision: February 19, 2010
Application serial No. 2284/2008
Owner: Red Bull GmbH
Status: Famous

Trademark: “MARINELA”
Date of decision: March 12, 2010
Application serial No. 103/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status. Famous

Trademark: “GANSITO”
Date of decision: March 12, 2010
Application serial No. 101/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Famous

Trademark: “BIMBO”
Date of decision: April 23, 2010
Application serial No. 100/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Famous

The following trademarks have been acknowledged as well-known in Mexico, through the ad-hoc procedure:

Trademark: “BARCEL”
Date of decision: March 22, 2010
Application serial No. 102/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Well-known

Trademark: “RICOLINO”
Date of decision: April 5, 2010
Application serial No. 104/2009
Owner: Grupo Bimbo, S.A.B. de C.V.
Status: Well-known

Trademark: “PRITT”
Date of decision: June 30, 2010
Application serial No. 638/2009
Owner: Henkel AG & Co. KGAA
Status: Well-known

Of course, the above lists do not show all the trademarks that have been, or could be, regarded as well-known or famous in Mexico. It is limited to those registered trademarks that have been considered, as of August 5, 2010, as well-known or famous in Mexico through the ad-hoc procedure provided by section 98 bis-1 of the Mexican Industrial Property Law. Other trademarks have been acknowledged as well-known (and famous I assume, although I am not aware of such case) as a consequence of an invalidation or infringement actions, or just because the examiner believed they were famous or well-known when objecting or rejecting a trademark application form a third party, even if there was no previous procedure deciding that that mark was well-known or famous in Mexico.

Before the 2010 amendments, many activities associated to the infringement of IP rights in Mexico were already punished with extreme severity. For example, the willful production, distribution and importation of goods bearing counterfeited trademarks in commercial scale are delitos graves or felonies, thus the defendant is not allowed to be free on bail during the trial. In the same sense, the willful non-authorized reproduction of works protected by copyright in commercial scale is a felony too.

However, in all cases, in order to start an investigation, the holder of the copyright or registered trademark copyright had to file a querella or formal complaint. A characteristic of the crimes that require querella is that the right holder may stop the investigation or the trial by withdrawing the charges (perdón in Spanish).

The querella requirement could obstacle an investigation; for example, when officials of the Customs Agency or the General Attorney Office found and seized a shipment of counterfeited goods or illegal copies of works, without a querella, there was no justification to maintain the seizure of goods or authority to continue the investigation. Further, the formalities that have to fulfill a power of attorney required to file a querella can be very difficult to accomplish for foreign entities. As a result, a federal judge could dismiss a trial because the power of attorney of the representative of the right holder was missing some formal requirement.

As I said before, in the case of crimes that need a formal complaint, the copyright or trademark owner could terminate the investigation or even the trial with a perdón or withdrawal of charges. This possibility allowed the trademark or copyright holder to negotiate a settlement with the defendant, although this sort of negotiations often discouraged, even upset, the officials of the General Attorney Office.

Now, with the June 2010 amendment, many -not all- IP related crimes (most of them associated to copyright) will be investigated ex-officio.

In the copyright field, for example, willfully producing, reproducing, importing, transporting, distributing, selling (in a store) or leasing copies of copyright protected works, with commercial purposes and without authorization, is not only a felony but also will be investigated ex-officio. On the other hand, willfully selling unauthorized copies of copyright-protected works in the streets, with commercial purpose, is a crime that now will be investigated ex-officio, although it is not a felony.

In the trademark field, the June 2010 amendment did not change most of the crimes associated with trademark counterfeiting provided in the statute. Most cases of trademark counterfeiting remain being felonies, but they still need the formal complaint or querella filed by the trademark owner in order to be investigated.

Nevertheless, as a consequence of the June 2010 amendment, willfully offering in sale goods bearing counterfeited trademarks, in the streets with commercial purposes, is now a crime that may be investigated ex-officio although, paradoxically, it is not a felony.

The Federal Congress also amended some provisions regarding the preliminary measures that a trademark, patent or copyright holder may request from the Mexican Patent and Trademark Office (MPTO) to stop infringing activities, namely the requirements that the defendant must fulfill to lift such measures.

The most usual way to oppose infringement of IP rights –including most copyright infringement cases- is the administrative infringement action, filed with the MPTO. The MPTO has authority to issue preliminary measures. The preliminary measures may include the seizure of infringing products and an order to the infringer to stop the production of infringing products and recall the merchandise already in hands of distributors.

In order to obtain the preliminary measures, among other requirements, the defendant must file a bond. The purpose of the bond is to guarantee the payment of the actual damages that the preliminary damages may cause to the defendant in case the MPTO decides there was no infringement.

The defendant is allowed to lift the preliminary measures and continue it business as usual, by filing another bond. The purpose of the bond is to guarantee the payment of the damages that the defendant’s activities may cause to the plaintiff.

In practice, the MPTO has not enough data, if any at all, about the amount of the possible damages that the preliminary measures may cause to the alleged infringer, thus the MPTO sets the amount of the bond at it own discretion. Sometimes, the plaintiff files the bond with the MPTO before it accepts to issue them; if it is high, there is a good chance that the MPTO will accept it, although technically it is an arguable practice.

If after the enforcement of the preliminary measures, the MPTO believes that the amount of the bond is too low, it has authority to request the plaintiff to increase the bond, within a three or five days term. Failure of the plaintiff to increase the bond would result in the lift of the preliminary measures.

Once that the preliminary measures have been enforced, the alleged infringer has the right to lift them, y filing another bond. The purpose of this bond is guaranteeing the payment of the damages that the alleged infringing activities may cause to the plaintiff. The practice of the MPTO was to set the amount of the defendant’s bond in twice the amount of the bond filed by the plaintiff.

Now, the amended statute stipulates that the bond that the defendant may file shall be 40% higher than the bond filed by the plaintiff. Nevertheless, the MPTO keeps authority to request the increase of the amount of the bonds filed by the plaintiff or defendant, in case it considers that their amounts are not high enough to guarantee the payment of the damages.

Finally, it is now an administrative infringement that the patent holder, or the recorded licensee (if the recorded license does not provide against the filing of infringement actions against third parties), files an infringement action against a third party, if there was an earlier final decision ruling that there was no patent infringement involving the same cause of infringement.

From my perspective, this new cause of infringement is odd, and I can only understand it as a way of refraining innovative pharmaceutical companies from harassing generics manufacturers with constant infringement actions repeating the same causes of infringement, assuming of course that the efforts of the patent holders to enforce their patent rights can be generally qualified as ‘harassment’.

The amendments to the Federal Criminal Code suggest that there is an intention to increase the fight against piracy, although it also shows lack of a coherent strategy, given the different treatment to crimes associated to trademarks and those related to copyright, and the inconsistencies in each field.

Only time will tell if the will to combat piracy is real, or only a measure to cool down Mexico’s trade partners, mainly the United States, who kept Mexico is the Watch List of the 2010 Special 301 Report.

The purpose of this post is offer a basic explanation about precedents in Mexico and their effectiveness in IP-related cases.

When I say “precedent”, I am referring to a published decision issued either by one of the salas or chambers of the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA), a tribunal colegiado de circuito court of appeals or the Supreme Court. It does not mean that there are no precedents from the MPTO. The MPTO is the first instance in most patent and trademark infringement or invalidation cases, so of course there are precedents, but they are not reported or collected. Mexican lawyers learn about the precedents of the MPTO from our own experience and interchange of ideas with other lawyers and sometimes with the MPTO’s officials. Although the MPTO does not have to follow its own precedents, it always has to state the statutory provisions applicable in each case and explain the reasons of all the decisions it issues.

About the decisions of the courts, it is necessary to distinguish different situations.

First. All the decisions from the federal courts (Mexico is a federal republic, so there are also state courts; the availability of decisions from state courts vary from state to state) become public shortly after they are issued, although the information about the involved parties may not be available in most cases. This situation makes it difficult locating certain decisions if you do not have information about the case number and the court that issued the decision you are looking for.

Second. The decisions of the juzgados de distrito or federal district courts and tribunals unitarios de circuito or higher federal courts are not reported or collected, thus there are almost no references to district courts or higher federal courts as source of precedents.

Third. When a court of appeals, a chamber of the FCTAA or the Supreme Court considers that the legal issues involved in a case are particularly relevant, it may decide to prepare an abstract about the ruling (we call it tesis) and publish it in a collection of precedents issued every month: the Semanario Judicial de la Federación or Weekly Judicial Journal of the Federation (it is no longer weekly, but it kept the name) in the case of the courts of appeals and the Supreme Court, and the Revista del Tribunal Federal de Justicia Fiscal y Administrativa or Journal of the Federal Court of Tax and Administrative Affairs in the case of the chambers of the FCTAA. These published rulings constitute the precedents.

The abstract of the ruling includes the identification of the issuing court and the case number, so it is relatively easy to obtain a copy of the actual decision and get a deeper knowledge about the reasoning behind the precedent.

In a broad sense, the collection of published precedents is called jurisprudencia; in a more restrictive and technical sense, only the binding precedents are jurisprudencia. Jurisprudencia is often translated into English as ‘jurisprudence’, although the concept is much narrower under Mexican law.

Fourth. In general terms, a precedent becomes binding or jurisprudencia when the ruling has been confirmed in five consecutive decisions –in the case of courts of appeals and the Supreme Court-. A decision may also become binding when different courts of appeals, or the two specialized chambers of the Supreme Court, render contradictory rulings about the same legal issue and the Supreme Court decides which ruling must prevail.

In the case of the FCTAA, it is divided in different chambers of three judges each. There is one chamber specialized in intellectual property matters that decides most appeals against the decisions of the MPTO and the Mexican Copyright Office. The specialized chamber of the FCTAA may publish precedents, but only the precedents of the Highest Chamber of the FCTAA may become binding, if and when a ruling has been confirmed by three or five consecutive decisions, or when it decides the prevailing ruling in the case of contradictory decisions between different chambers of the FCTAA.

Fifth. A precedent may become binding for lower courts, but not for higher or equal-ranked courts. The binding precedents from the Supreme Court and the courts of appeals are binding for all the chambers of the FCTAA.

The MPTO is not a court (even if it acts like one in infringement and invalidation cases) but an administrative entity. Therefore, the MPTO has no actual obligation to follow the binding precedents issued by the courts, although it usually tries to adjust its decisions to such binding rulings.

Further, it is very usual in the Mexican practice –the MPTO, courts and lawyers included- to rely on the authority of some non-binding precedents to justify decisions, opinions and claims.

For many years, a usual complaint from patent owners of pharmaceutical products was that the Mexican FDA -Comisión Federal para la Protección contra Riesgos Sanitarios, better know by its acronym COFEPRIS- was encouraging patent infringement by issuing marketing authorizations for patent-infringing drugs.

On 2003, the President amended the Reglamento de la Ley de la Propiedad Industrial or Rules of the Industrial Property Law and the Reglamento de Insumos para la Salud or Rules for Health Supplies to create a “link” between the Mexican Patent and Trademark Office (MPTO) and the Mexican FDA.

According to the amended Rules of the Industrial Property Law, the MPTO must publish every six months an updated list of patented drugs, identified by the name of the active ingredient. The list must include the names of the patentee and recorded licensee (if any), the term of the patent, among some other information about the protected drug. The idea of the list, widely known as the “List of Patented Medicines”, is to inform the public, and especially the Mexican FDA, about the existence of patent rights on certain active ingredients.

On the other hand, according to the amended Rules for Health Supplies, when filing an application with the FDA for marketing authorization of a drug, the applicant must state either there is no patent protection for the drug, or that it is the patent holder or recorded licensee. The Mexican FDA has to review the List of Patented Medicines and even verify with the MPTO to make sure that there would be no patent infringement if it grants the marketing authorization to the applicant. If necessary, the Mexican FDA will request the applicant to provide evidence that it is the patent owner or that it has a license recorded with the MPTO.

The disputes around the linkage system

It was clear that patents claiming new active ingredients should be included in the List of Patented Medicines, and that patents claiming processes were not to be listed.

However, there were a lot of questions about patents for new compositions or formulations and new uses. The language used when amending the Rules of the Industrial Property Law raised some doubts, although the amended Rules for Health Supplies only considers patents claiming new active ingredients as subject of being included in the List of Patented Medicines.

The position of the MPTO has been that new formulations should not be included in the List of Patented Medicines. It did not mean that is was ok to infringe patents claiming new formulations or processes, but that the mechanism provided by the linkage system only benefited patents that claimed new active compounds.

Many innovative pharmaceutical laboratories starting filing amparos or constitutional appeals with the district courts in Mexico City against the lack of inclusion of their formulation patents in the List of Patented Medicines, and in most cases the patent owners prevailed, so the MPTO has been forced to publish several addenda to the List of Patented Medicines to include patents for new formulations and compositions.

Although most federal courts of appeals in Mexico City supported the idea that the List of Patented Medicines should include patents for new formulations, the Fourth Court of Appeals in Mexico City published a ruling, stating that only patents on new active ingredients should be included in the List of Patented Medicines.

The expansion of the linkage system

The contradictory rulings between different courts of appeals caused the intervention of the Supreme Court shortly after the Fourth Court of Appeals in Mexico City published the ruling. On January 2010, the Second Chamber of the Supreme Court, specialized in administrative matters, ruled that the List of Patented Medicines should include patents claiming new formulations in a very close decision (3 Judges in favour and 2 Judges against).

In the Mexican system, a binding decision from the Supreme Court is binding for all federal, state and administrative courts in Mexico, but not for the MPTO. Technically, the MPTO could continue refusing to include patented formulations in the List of Patented Medicines and the owners of the excluded patents would have to appeal such exclusions, although such appeals should be decided quicker than before the Supreme Court’s decision.

Notwithstanding the above, the MPTO usually tries to adapt its actions and decisions to the binding precedents of the courts, so I would expect that the MPTO will voluntarily include patents on new pharmaceutical compositions and formulations in the next number of the List of Patented Medicines. The ruling of the Supreme Court did not mention patents for new uses of drugs, and we may exact the MPTO to continue opposing the publication of these patents in the List of Patented Medicines.

Some downside of the linkage system and its expansion

All measures and mechanisms to improve the protection of patents and prevent the infringement are welcome. However, the linkage system and the expansion ruled by the Supreme Court could lead to unfair decisions.

First, and this has nothing to do with including formulation patents in the List of Patented Medicines, I am against the fact that the Rules for Health Supplies force applicants for marketing authorizations to prove that they are the patent owner or a recorded licensee. Why there should be a license and why it should be recorded? If the applicant for the marketing authorization is just distributor, there is no reason for the parties to execute a license; however the Mexican FDA will still demand evidence that the applicant has a license recorded with the MPTO in order to issue the marketing authorization. From my perspective, the demand stated in the Rules for Health Supplies about the existence of a license recorded with the MPTO shows that neither the Mexican FDA not the MPTO understood the legal consequences of recording a license. It also evidences the extremely formalistic mentality of the Mexican bureaucrats and society in general.

Second, considering the restrictive construction that the MPTO originally made of the amended Rules of the Industrial Property Law about what patents should be included in the List of Patented Medicines, I believe that it was not the original intention of the Administration to benefit formulation patents from the linkage system. I think that the courts have been able to expand the system to formulation patents mainly because the lousy language used in the 2003 amendment to the Rules of the Industrial Property Law.

The fact that the Rules for Health Supplies were amended at the same time than the Rules of the Industrial Property Law and that the Rules for Health Supplies clearly limit the scope of the linkage system to patents claiming an active ingredient somehow confirms the above.

Third, the inclusion of formulation patents in the List of Patented Medicines, although it may be a very effective way to prevent infringement of such patents, it may also cause the rejection of marketing authorizations for drugs that use a formulation different from the one claimed in the patent. Unlike many cases of patents claiming active ingredients, the Mexican FDA may have to interpret the claims of the formulation patent to decide whether the applied drug infringes said claims. This is dangerous, because the Mexican FDA is not a patent expert, and it is unclear whether if the MPTO would be able to provide effective, timely and accurate support in this field.

Does it make sense for a non-innovative country such as Mexico to increase the protection to pharmaceutical patents at the risk of blocking non-infringing drugs?

The decisions of the FCTAA have made the Mexican Patent and Trademark Office (MPTO) to acknowledge the extension of term of several pipe-line patents, for the same extended term granted to the corresponding foreign patent from which the priority was claimed. Further, the decisions of the Highest Chamber of the FCTAA allowing the extension of term are now binding*. For a more detailed explanation about Mexican pipe-line patents and their extension, you may review the post  The extension of life of patents in Mexico.

In spite of the relatively large number of extended pipe-line patents, all the controversy surrounding the pipe-line patents themselves and their life extensions and that the FCTAA published the first precedent regarding this matter in 2005, neither the Federal Courts of Appeals nor the Supreme Court had published any ruling concerning the term extension of pipe-line patents, until January 2010.

The January 2010 issue of the Weekly Judicial Journal of the Federation publishes a non-binding decision of he First Court of Appeals in Administrative Matters of the First Circuit (based in Mexico City)**. This decision is associated to a final appeal (Amparo Directo) filed by the well-known Mexican pharmaceutical company Probiomed, S.A. de C.V. The decision rules that the term of pipe-line patents, and of all patents in general, cannot be extended whatsoever. This decision is in open conflict with the binding ruling of the FCTAA, and restarts a discussion that I thought was (a few technicalities aside) essentially over, as a consequence of the binding precedent from the FCTAA and because all pipe-line patents, even the extended ones, should expire by mid 2012 (the statute provided that no pipe-line patent could have a term longer than 20 years counted from the filing date in Mexico).

Notwithstanding the above, the decision of the Federal Court of Appeals does not imply an actual change in the way Transitory Article Twelve of the 1991 Industrial Property Statute has been understood, particularly concerning the extension of pipe-line patents.

The decision of the First Court of Appeals in Mexico City is non binding (the binding precedents of the Highest Chamber of the FCTAA are not binding for  the District Courts and Courts of Appeals, only for the different lower Chambers of the FCTAA), so there is no reason for the Specialized Chamber in Intellectual Property of the FCTAA to stop following the binding decision of the Highest Chamber of the FCTAA and continue ordering the MPTO to acknowledge the term extension of pipe-line patents when the foreign patent offices grant the term extension of the foreign patent that corresponds to the claimed priority in the Mexican pipe-line patent.

We have to wait to see if the precedent from the First Court of Appeals in Mexico City causes the intervention of the Supreme Court. The Supreme Court may intervene if there is a contradictory ruling from another Court of Appeals. I believe that at least the first decision of the Highest Chamber of the FCTAA allowing the extension of term of a pipe-line patent (precedent V-P-SS-629, decided on July 7, 2004) was appealed by the MPTO and a Court of Appeals had to decide based on the merits of the appeal (the statute changed in December 2005; since then, most appeals of the MPTO against the decisions of the FCTAA are dismissed).

Not everybody is allowed to demand the intervention of the Supreme Court to decide which of the contradictory decisions held by different courts of appeals is right, but the MPTO can. I hope that the MPTO, or the parties involved in the appeals, will soon demand such intervention of the Supreme Court, so we may have certainty about the validity of the term extension of Mexican pipe-line patents. (Update January 2011: Unfortunately, as a result of some formal flaws in the appeal brief that the MPTO filed against the first decision of the Highest Chamber of the FCTAA of 2004, the Federal Court of Appeals dismissed that appeal without reviewing the merits, thus the intervention of the Supreme Court, will take more time to occur, if ever).

* Jurisprudencia or binding decision VI-J-SS-40. Journal of the Federal Court of Tax and Administrative Affairs, Sixth Era, Year II, No. 21, September 2009, page 27.

** Isolated precedent published in the Weekly Judicial Journal of the Federation, Ninth Era, Courts of Appeals, XXXI, January 2010, page 2173.

Mexican law was already quite liberal, when compared with most Latin American countries, regarding the formal requirements for power of attorney documents for trademark and patent filing, prosecution and maintenance. Mexican law does not demand notarization, consular legalization or Apostille on such documents. Now, the law is going a little further

The MPTO will no longer request a power of attorney document in most trademark filing cases.

Instead, the MPTO will consider that the agent is authorized to file the trademark application on behalf of the applicant if the agent states under oath that it has such an authority. Of course, the MPTO will continue accepting the power of attorney document if the agent files it, but the examiners will no require it, and the lack of filing of the power of attorney would no longer delay the formal examination of the trademark application, the renewal application or an application to record an assignment or license.

Starting April 1st 2010, the new templates for trademark applications and renewal application will be mandatory; these new templates reflect the amendments to the law concerning the power of attorney.

It is a great thing that the trademark filing procedures in Mexico are becoming less formal. However, many Mexican lawyers and practitioners are worried about the consequences of such amendments in the long term, especially in connection to the validity and enforceability of trademark registrations issued without filing a power of attorney with the MPTO.

As I see it, the documentary evidence of the authority to file a trademark application or renew a registration on behalf of a third party –the applicant- is a different thing from the authority itself. Under the current amended statute, a trademark registration may not be invalidated due the lack of the filing of the power of attorney or due formal flaws in the document. However, a trademark registration or renewal could be invalidated due the absolute lack of authorization (verbal or written) to file the trademark or the renewal application. It may seem a very thin distinction, but technically speaking it is a huge difference.

It also seems that the MPTO will only consider the individual that actually signs the trademark or renewal application as attorney of record. If later, another professional from the same firm has any intervention in the prosecution of the application, the MPTO will not acknowledge him/her as attorney-of-record and will demand a written power of attorney, if it has not been filed, or payment of the government fee for the appointment of a new attorney of record. This will be an extremely delicate situation for firms that allow different professionals to intervene in the prosecution of trademark applications, and from my perspective, such a practice would be absolutely unfair and illegal.

Therefore, although no longer essential for the approval of the trademark application, I strongly recommend executing a written power of attorney and filing it with the MPTO at some point during the prosecution of the trademark application, or even after the issuance of the trademark registration or renewal, in order to secure evidence of the existence of the authority to do such filings.

Although less publicized, the amendments to the filing guidelines of the MPTO will introduce some changes in the practice of trademark filing and prosecution in Mexico. The most obvious change is that now there are mandatory templates for the most relevant filings with the MPTO; before the amendment, there were templates only for trademark and patent applications and for trademark renewal applications. Agents and lawyers prepared their petitions for all the other filings, in the way they better thought it suited the law and their needs. I would assume that the use of templates should help the MPTO to expedite the recordation of assignments, licenses and changes of name.

However, the MPTO is not only changing the guidelines; it is also changing some of its own practices, and not for good. An important change in the MPTO’s practice is that it will no longer allow applicants to request the issuance of certified copies of documents previously filed with the MPTO, at the same time that the applicant is fulfilling a certain requirement associated to a record or application different from the ones the documents were filed.

For example, let’s assume that there are two separate trademark applications for the same mark but in different classes, claiming the same priority from a multiple-class foreign application. In the past, one certified copy of the foreign trademark application was enough to have the priority rights acknowledged in both Mexican trademark applications. When requesting the MPTO to acknowledge the priority rights in one application, the applicant filed the original certified copy; in the other application, when requesting the acknowledgement of the priority, the applicant could ask the MPTO to issue a certified copy of the priority document just filed in the first application, in order to evidence the existence of the priority right.

Now, with the change in the practice of the MPTO, if there were two separate trademark applications for the same mark but in different classes claiming the same priority from a multiple-class foreign application, the applicant’s agent will have to obtain as many certified copies of the priority document as she/he may need, before requesting the acknowledgement of the priority rights, and file each request of acknowledgement of priority rights with its own priority document.

A similar situation will take place with the recordation of assignments, licenses, franchises, mergers, changes of name and securities, when they involve more than one trademark registration/application. Basically, the change of the MPTO’s practice will be reflected in an increase of the out-of-pocket expenses and in many cases it will jeopardize the timely filing of documents when there is a non-extendable deadline.

It is odd to see how, on one hand, the filing and prosecution of trademark applications are becoming less formal, and at the same time, the MPTO changes its practice to make the filing and prosecution of trademarks less expedite. It does not make any sense, and I believe it will be just a matter of time before some applicants start appealing the MPTO’s refusals to issue certified copies or to allow the intervention of more than one professional in the prosecution of a trademark application.