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In conformity with the provisions of Mexico’s Industrial Property Law (Ley de la Propiedad Industrial), trademarks may be constituted by a simple name, by a design or by a three-dimensional form, or they may be “mixed” involving a combination of the three forms referred to above, as is the case of a trademark that contains a name and design, or a trademark that contains a name, design and three-dimensional form, etc. Mexico’s Industrial Property Institute (Instituto Mexicano de la Propiedad Industrial or IMPI) grants trademark registrations in Mexico after carrying out a “detailed examination” (examen de fondo) in which such agency analyzes if the mark may be registered, which is to say there is no legal impediment to registration (in accordance with the restrictions contained in article 90 of the law) and, where it also reviews existing trademark registrations and applications on file in its own database in order to avoid any confusion to the general public regarding the proposed trademark. It is during this detailed examination where trademark authorities must analyze the different elements comprising a trademark, including cases involving “mixed” trademarks, in order to analyze the feasibility of registering a trademark name, trademark design and three-dimensional trademark form, separately, as in the case of “mixed” trademarks. This being the case, since the detail examination is not carried out separately, it is possible that a trademark name, design or three-dimensional form not subject to registration in Mexico could be accompanied by other elements (other names, logos, designs or three-dimensional forms that are distinct) resulting in a mark which, according to some of its fundamental elements, is not subject to protection because it creates confusion in the marketplace. In cases where one of the elements (name, design or three-dimensional form) is not subject to registration, Mexico’s trademark authorities will reject registration of the mark since in Mexico once a trademark application has been filed, such may not be amended by removing one of its elements, thus making it necessary to file a new application which does not contain the non-registerable elements referred to above.
On April 6, 2010, new reforms to the Mexican Wildlife Law (Ley General de Vida Silvestre) were published in the Official Journal of the Federation which prohibit the introduction of any non-native exotic animals or game to Wildlife Conservation and Management Units or UMAS. Such reforms also prohibit the importation into Mexico of exotic wildlife that may threaten the biodiversity, economy or public health of the country. Such reforms apply to wildlife species that are not native to the particular place where an UMA is located. As such, non-native exotic game will not be permitted to be released or introduced to such particular UMA as per new articles 27Bis and 27Bis 1 of the Wildlife Law. Prior to the new reforms, the Wildlife Law was silent regarding the prohibition or allowance of exotic wildlife in particular UMAS. As a result of the new reforms, it is important for those who own ranch property in Mexico with an UMA permit to comply with the requirement of handling only native wildlife, and to remove any exotic wildlife currently at such property to avoid penalties or sanctions by the Mexican environmental authorities, or the potential revocation of the corresponding UMA permit.
Mexico’s Lower House of Congress has approved a constitutional reform, which was previously approved by Mexico’s Federal Senate, which adds a third paragraph to article 17 of the Political Constitution of the United Mexican States establishing a constitutional level known as “collective actions” in Mexico. The paragraph that will be added to the Constitution contains the following text: “Laws that regulate those actions and procedures for the adequate protection of collective rights and interests, as well as measures that may be taken by individuals and their organization for the defense of same.” The reform allows for collective actions and will provide guidelines for its regulation and procedural implementation in Mexico, as has been done in other countries such as the United States of America, the United Kingdom, Portugal, Spain, Brazil, Uruguay, Argentina and Venezuela. Collective actions in Mexico will now be parallel to those called “class actions” that exist in other countries under the Anglo-Saxon or “common law” tradition, which seek to aggregate the rights of a group of persons for their defense through collective actions and procedures. The various rights of members of a group will be considered collective in a strict sense for individuals in a collective group according to a determination of the propriety of a collective action, and whether or not common circumstances exist to permit linking all the individuals together for their common protection or defense. In Mexico, the constitutional recognition of class actions will have an impact in various areas such as consumer protection, environmental protection, economic competition, urban development, Mexican cultural property and public safety, among others. This is a far-reaching reform, but it will not enter into force until two-thirds of the legislatures of Mexico’s states have approved the reform and such has been signed by Mexico’s president and published in the Official Journal of the Federation. Upon any future approval, Mexico’s Congress will need to adopt new regulations accommodating this new constitutional precept.
On March 24, 2009 the Second Chamber of Mexico’s Supreme Court of Justice (Suprema Corte de La Nación or SCJN) approved case number 2a./J.41/2010 under the heading “Trademarks. When proposed in a mixed form (name, design and three-dimensional form) and such latter form is not subject to registration by individuals, such circumstance impedes the registration of trademarks.” In its decision, the SCJN held that a consistent interpretation of Mexico’s Industrial Property Law and Regulations means that a party interested in registering a trademark has the right to elect the type of mark for which he or she seeks protection of their products, whether such is a name, unnamed, three-dimensional or mixed, with the court stating that in cases where the interested party desires to register a mixed trademark, the three-dimensional element must be examined separately from the other remaining elements of the mark so that the trademark authorities may, in their judgment, determine that three-dimensional form trademarks may not be registered by individuals, which would mean that individuals could not register a mixed trademark that includes a three-dimensional form. Please note that this case decision has yet to be published in the Judicial Weekly of the Federation.
