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As discussed in previous publications, Mexican Intellectual Property law has established a series of actions as administrative violations for the improper use of protected rights related to distinctive marks or inventions, including, among others: the use of trademarks, commercial names or commercial notices that are the same or similar to those registered without the consent of the owner; manufacturing or creating products protected by a patent or an industrial model or design registration; offering products for sale which contain a trademark or which are patented knowing full well that such products are not authorized by the owner of the trademark or patent; etc. In this article, however, we discuss a specific violation where companies, acting in bad faith, intend to take advantage of the notoriety of trademarks that have a good reputation in the market. Section V of article 213 of the law on this subject establishes that the following provides cause for a proceeding and, as such, an administrative violation, “Using, without consent from the owner, a registered trademark or anything similar to a degree of confusion, with a commercial name or denomination or corporate name or vice versa, as long as such names, denominations or corporate names are related to establishments that operate with the products or services protected by the trademark”. This section is relevant in those cases when a person appears before the corresponding authority, improperly and knowing well that a trademark may not be registered because it belongs to a third party, to request authorization to form an entity whose corporate name primarily contains the trademark that it intends to use. In other words, authorization to create a company whose name is that of a trademark of certain prestige is requested and, at times, obtained in order to carry out the production or provision of services related to the trademark. Without a doubt, this behavior confuses the general public, which typically recognizes products more by their trademark than by the name of the entity that produces them. Consequently, these offenders market and distribute their products by showcasing the name of the company on the packaging, the same which contains the trademark as a fundamental element. Mexican authorities tend to verify that trademarks have not been violated in this manner upon formation of an entity; however, there have been occasions when an improper corporate name authorization has been granted. However, this does not preclude the offender from being punished for using the registered trademark, and the authorities will order the removal of the trademark from its denomination or corporate name.
In practice, it is very common to confuse a savings fund with an employees’ savings and loan association. Consequently, it is important to clarify the differences that exist between such figures from a labor perspective. The savings fund is an optional benefit not provided by the Federal Labor Law. Therefore, it is not mandatory for employers, since it was created as a form of social welfare to encourage employees to create a habit of saving and an additional benefit for the provision of their services, and a benefit for employers since it is deductible if they comply with certain requirements provided by the Social Security Law and the Income Tax Law and its regulations. For the formation of a savings fund, it is necessary to create a “plan” and/or “bylaws” which establish its objectives, to whom it applies, beneficiaries, the amounts to be paid by the employees and the employer, the procedure to follow in order to receive a distribution of the funds, when it will be paid out, and how it will be administered, etc. On the other hand, an employee savings and loan association is an association formed by the employees of a company, without any intervention or obligation by the company, the purpose of which is to save and/or grant credits or loans to the employees who formed it, with low interest rates using the economic contributions made to such savings and loan association by the employees. Since the purpose of employee savings and loan associations is to provide economic assistance to their members, their formation and operation is not regulated by any law or regulation. As a result, members of the association must create regulations or bylaws containing the rules so that such association may operate. In this case, and unlike savings funds, the company operates only as an intermediary retainer and informant with respect to employee contributions. Even though employee savings and loan associations are not regulated by any legal provisions, the association should comply with the requirements established by the Federal Labor Law and the Income Tax Law for its proper operation.
In Mexico, it is important to verify whether real property used for construction and development is considered to be “Forest Land” and, if so, developers must to change the zoning of such forest land before the Mexican Department of the Environment and Natural Resources. The General Sustainable Forest Development Law (Ley General de Desarrollo Forestal Sustentable) defines forest land broadly as that which is covered by “forest vegetation,” which means, “The combination of plants and fungi that grow and develop in their natural state forming forests, jungles, arid and semi-arid zones and other ecosystems giving rise to the development and balanced cohabitation of other natural resources and processes.” Given the lack of a national forest inventory, Mexican federal environmental authorities have considered that all land that is growing or has grown natural vegetation is forest land, even when dealing with land developments within urban zones. On November 30, 2011, the National Commission of Forests published the Decree by which Forest Zoning will be integrated and organized, the same which establishes the characteristics and criteria to determine: (i) conservation zones, restricted or prohibited uses; (ii) production zones; and (iii) restoration zones. Similarly, the Decree contains the methodology, criteria and procedures for the determination of Forest Zones, establishing that urban zones and human settlements among others, are considered “non-forest land”. The Agreement contains various deficiencies but opens the door to a more serious analysis of the classification of land at a national level and the expectation for better coordination at the three levels of government when revising and approving state and municipal plans for urban development.
As discussed in previous publications, Mexican Intellectual Property law has established a series of actions as administrative violations for the improper use of protected rights related to distinctive marks or inventions, including, among others: the use of trademarks, commercial names or commercial notices that are the same or similar to those registered without the consent of the owner; manufacturing or creating products protected by a patent or an industrial model or design registration; offering products for sale which contain a trademark or which are patented knowing full well that such products are not authorized by the owner of the trademark or patent; etc. In this article, however, we discuss a specific violation where companies, acting in bad faith, intend to take advantage of the notoriety of trademarks that have a good reputation in the market. Section V of article 213 of the law on this subject establishes that the following provides cause for a proceeding and, as such, an administrative violation, “Using, without consent from the owner, a registered trademark or anything similar to a degree of confusion, with a commercial name or denomination or corporate name or vice versa, as long as such names, denominations or corporate names are related to establishments that operate with the products or services protected by the trademark”. This section is relevant in those cases when a person appears before the corresponding authority, improperly and knowing well that a trademark may not be registered because it belongs to a third party, to request authorization to form an entity whose corporate name primarily contains the trademark that it intends to use. In other words, authorization to create a company whose name is that of a trademark of certain prestige is requested and, at times, obtained in order to carry out the production or provision of services related to the trademark. Without a doubt, this behavior confuses the general public, which typically recognizes products more by their trademark than by the name of the entity that produces them. Consequently, these offenders market and distribute their products by showcasing the name of the company on the packaging, the same which contains the trademark as a fundamental element. Mexican authorities tend to verify that trademarks have not been violated in this manner upon formation of an entity; however, there have been occasions when an improper corporate name authorization has been granted. However, this does not preclude the offender from being punished for using the registered trademark, and the authorities will order the removal of the trademark from its denomination or corporate name.
Recently, the Fourth Collegiate Court on Administrative Matters of the First Circuit issued legal opinion numberI.4o.A. J/102 (9a.), titled “Intellectual Property. Characteristics of Descriptive Trademarks and Reasons toProhibit their Registration.” In its legal opinion, the Court held that a mark is descriptivewhen it refers to the quality, characteristics or properties corresponding to the product or service offered in themarketplace, the differentiation of which is intended. Additionally, the Court determined that foreign words willhave such characteristic “only when the consumer, by means of the products or services referred to, directlyperceives the descriptive character or function of such name designation”. The foregoing is in consideration ofthat fact that the legislature’s intent is to avoid unfair competition between manufacturers ormerchants by preventing the individual appropriation of common expressions thateveryone has the right to use. Accordingly, the Fourth Collegiate Court on Administrative Matters of the FirstCircuit determined that the prohibition against registering descriptive marks is supported precisely by their lackof a distinctive characteristic in providing the public information on the properties and characteristics of theproduct, and the need to maintain such descriptive language that it may be freely available to used bythose who operate in the corresponding market segment.
