On November 5, 2020, the new Federal  Law for the Protection of the Industrial  Property (FLPIP) came into force in  Mexico. Consequently, the IP legal framework  was modified, following the amendments to the  Mexican Industrial Property Law of August 2018. Prior to the 2018 modifications, the official  definition of trademark was as follows: "Every  visible sign that distinguishes products or services  from others of their same kind or class in the  market". Therefore, in order to be considered as  a mark, the sign must be "visible" or observed  through the sense of sight.

Since 2018, the definition of trademark was  amended to read as: "Any sign perceptible by  the senses and capable of being represented in  a way that allows determining the clear and precise  object of the protection, which distinguishes  products or services from others of the same  kind or class in the market,", opening the possibility  of protecting non-traditional trademarks in  Mexico.

Additionally, both the abrogated Law and the  new FLPIP enumerate those non-traditional  signs that can be considered as trademarks, for  example, smells, sounds, holograms, etc. However,  motion marks are not expressly included in the  Law as a trademark that can be protected in our  country.

Article 3(3)(h) of the European Union trademark  implementing regulation (EUTMIR) defines motion marks as "trade marks consisting of, or extending  to, a movement or a change in the position of  the elements of the mark," and these shall be  represented by submitting a video file or by a  series of sequential still images showing the  movement or change of position.

For incorporating the motion marks and other  non-traditional trademarks within its legislation,  the European Union Intellectual Property Office  (EUIPO) modified its regulations and eliminated  the requirement of the graphical representation  of a sign and now it is only necessary for the  mark to be represented in a manner "which  enables the competent authorities and the  public to determine the clear and precise  subject matter of the protection.".

In light of the above, it is clear that with the  modifications to the Industrial Property Law on  2018 and now with the implementation of the  new FLPIP, the IP legal framework has been  aligning with the international rulings and  standards. By eliminating the requirement of  "visual representation", now the only condition  for a sign to be considered as a trademark is to  be perceptible by the senses and be capable of  being represented to clearly determine the  object of protection.

As a consequence of the execution of the  United States-Mexico-Canada Agreement (USMCA), Mexico has been placed in the forefront of non[1]traditional trademark protection in Latin America. The trade agreement contains an important  Intellectual Property Chapter, which among other provisions, includes the protection eligibility for  non-visual signs, such as sounds, smells, etc.

In Latin America protection for these types of  trademarks is still pending. However, with  Mexico in the avant-garde, it is very possible that in the near future we could see the expansion of  protection for non-traditional trademarks to the  rest of the countries in Central and South America.  In Mexico, the new FLPIP includes a list of  those distinctive signs that will be recognized as  a trademark:

  • Words, letters, numbers, figurative elements, color combinations, and  holograms;
  • Three dimensional shapes;
  • Trade names;
  • The name of an individual;
  • Sounds;
  • Smells;
  • The combination of all the above;
  • Trade dress.

This list should be considered as enunciative,  but not limitative of the distinctive signs that can  constitute a trademark. If the mark complies  with the requirement of being perceptible through  the senses and represented in a way that allows  determining the object of the protection, it will  be possible to obtain its registration.

Nevertheless, following the suppression of  the visual representation requirement from the  Law, many non-traditional trademark applications have been filed in our country, including those  not expressly included in the Law such as flavor  marks.

Regarding the applications for flavor marks,  the Mexican Trademark Office objected and  eventually denied the same, arguing that they  were not enlisted in the Law as distinctive signs  that could be subject of protection, without  considering that these marks are indeed  noticeable through the sense of taste, and it is  possible to represent the same in a manner that  allows to determine the object of the protection,  for example, with a description of the flavor or a  formula for obtaining the same.

Consequently, the range of possible no[1]traditional trademarks that can be protected in  our country should be broad than the enunciative list included in the Law, that should serve as a  guide and not as a limiting catalog.

The clear example are the motion marks.  These non-traditional trademarks are not  enlisted in the Law as a "sign that can constitute  a trademark.". However, considering that these  marks are noticeable through the eyesight, and  it is easily represented to be able to determine  its protection.

Derived from the information obtained from  the Mexican Trademark Office's database, until  today the authority has granted at least five  registrations for motion marks. However, many  other applications are still pending or under  examination. With no doubts, this constitutes an  important precedent for our legal landscape.

Together with the traditional requirements to  be able to file a trademark application (name  and address of the applicant, description of  goods or services, date of first use of the mark  in Mexico), motion marks must be accompanied  with an electronic file showing the mark in  motion, such as CD's, USB's or the like.

Motion marks have joined to the valuable variety of protectible traditional and non-traditional  trademarks in Mexico, which heightens the  trademark protection standards in our country.  Additionally, these registrations will transform in  examples for trademark owners and its legal  representatives to help them achieve registra[1]tions for other non-traditional trademarks which  are not enlisted in the FLPIP.

In conclusion, despite the fact that our FLPIP  does not expressly recognizes motion marks as  trademarks that can be protected in our country,  the fact that our Trademark Office has granted  at least five trademark registrations for these  types of non-traditional marks, as well as other  smell and sound marks, has settle an important  precedent in Mexico for the recognition and  protection of non-traditional trademarks that  will bring important benefits to the Mexican IP  system, trademark rights holders, and of course,  consumers.

Some of these benefits are more legal  certainty, foreign investment, economic benefits,  among several others which are also closed  related to the capacity of changing towards the  new reality of our world, the technological  advances and the adaptability of the inter[1]national standards and rules with the Mexican IP  legal provisions.

Originally published in The Trademark Lawyer

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