Intellectual Property Articles

April 30, 2012

Importance of Establishing Strategies for Intellectual Property Protection

By Antonio Campero

These days it is hard to think of a company that is not somehow linked to intellectual property rights. Even the smallest companies can identify a link to intellectual property rights in some manner, either through their use of a trademark to identify their products or services, or because, over the passage of time, they have developed their own technologies that will eventually be the source of new inventions. In any case, it is always a good idea to adopt measures to adequately protect and administer these intangible rights from the start, given that, with the passage of time, they may become vital sources of competitive advantages or fundamental to the value of the company. It is difficult to properly … read more

March 30, 2012

Registering Trademarks with the Customs General Administration

By Antonio Campero

As of January 2012, a database was created, to be administered by the Customs General Administration, where Intellectual Property rights owners may register their trademarks that are already registered in Mexico. This database is intended to be an additional instrument to combat piracy in Mexico. The impact on trademark owners and consumers, when products are imported to Mexico bearing registered trademarks without proper authorization, is significant, including, of course, the costs arising from the prosecution of offenders once the products have entered the country, making this new instrument an effective tool intended to prevent these wrongful imports before they take place. For such purposes, companies or owners of registered trademarks in Mexico may voluntarily opt to register with the new … read more

January 27, 2012

Intellectual Property, An Asset to its Owners

By Antonio Campero

It is well known that companies invest in technological development and the result is inventions subject to protection by the Intellectual Property Law. Consequently, they have a competitive advantage as a result of the exclusive right to use such inventions. In the same manner, those companies that develop and properly register distinctive marks or symbols are at a significant advantage, especially when such are highly regarded by consumers. Furthermore, those with copyrights also obtain legal competitive advantages. However, on many occasions, in an accounting context, the true value of intellectual property rights is not recognized. On occasion, the value of intellectual property rights can be greater than that of all other assets of the company. Knowing and adequately determining the value … read more

December 16, 2011

Improper Use of Trademarks under Company Names

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 … read more

December 8, 2011

Recent Jurisprudence – Prohibition against Registration of Descriptive Trademarks

Recently, the Fourth Collegiate Court on Administrative Matters of the First Circuit issued legal opinion number I.4o.A. J/102 (9a.), titled “Intellectual Property. Characteristics of Descriptive Trademarks and Reasons to Prohibit their Registration.” In its legal opinion, the Court held that a mark is descriptive when it refers to the quality, characteristics or properties corresponding to the product or service offered in the marketplace, the differentiation of which is intended. Additionally, the Court determined that foreign words will have such characteristic “only when the consumer, by means of the products or services referred to, directly perceives the descriptive character or function of such name designation”. The foregoing is in consideration of that fact that the legislature’s intent is to avoid unfair … read more

November 8, 2011

Recent Agreements Entered into by IMPI

By Antonio Campero

The Mexican Institute of Intellectual Property (IMPI, for its acronym in Spanish) has always been very active in entering into international agreements for the increased protection of intellectual property rights. Recently, IMPI executed an agreement with the United Kingdom Intellectual Property Office (UKIPO). The agreement aims to increase the growth of innovation and creativity of Mexico and Great Britain, while allowing both countries to share better practices when enforcing intellectual property rights. The goal of this agreement is to support small and mid-size industries in both countries, which contribute to economic development by means of the innovation of new technology. Moreover, in the area of copyright and particularly software, IMPI entered into agreements with the Business Software Alliance Mexico (BSA) … read more

October 8, 2011

Considerations with respect to Franchise Agreements in Mexico

By Antonio Campero

In accordance with Mexican Intellectual Property Law, a franchise exists when technical know-how or technical assistance is provided in addition to issuance of a written license for use of a trademark, so that the franchisee may produce or sell goods or provide services in a uniform manner while maintaining the same quality, prestige and image of the products or service that are the subject matter of the franchise agreement. Even though the terms of the franchise agreement are negotiated by the parties, Mexican intellectual property law imposes conditions that must be met so that such agreement is effective. Of particular importance is the obligation by the franchisor to provide the intended franchisee, at least thirty days prior to the execution … read more

October 8, 2011

Recent Case Decision- Trademarks. Confusion of the Public Consumer

Recently, the Fourth Collegiate Court on Administrative Matters of the First Circuit issued a case decision entitled “Trademarks. Addressing differences and similarities is necessary for their review.” In such decision, the court determined that in order to find that a trademark is used by a business entity to induce the confusion, deception or error of the consumer, a complete review of all trademarks at issue is necessary in order to identify their differences and similarities. This is because it is the similarities between the trademarks that generate confusion, as they may induce the consumer to believe that the products covered by the trademark in question are protected under the authorization or license of a third party titleholder of another trademark … read more

September 8, 2011

Parallel Imports

By Antonio Campero

In Mexico, as in the rest of the world, trademarks are registered to allow their owners to use them directly or indirectly, through licensing or other authorizations. Consequently, the use of registered trademarks without the owner’s authorization gives rise to a cause of action that may be brought before the competent trademark authorities. Moreover, current Mexican law establishes cases, such as so-called “parallel imports”, in which the use of a trademark may not be denied by the trademark’s title holder to those who use, commercialize or distribute such trademark, as long as the introduction of the trademark into the stream of commerce was legally performed by the owner or authorized licensee of the trademark, so that the trademarked product is … read more

August 8, 2011

What Is a Utility Model?

By Antonio Campero

In Mexico, there are three figures that may be protected in the field of inventions: (i) patents; (ii) utility models (modelos de utilidad); and (iii) industrial designs, including industrial drawings and models. In this note, we will discuss the registration of utility models, which entails the issuance of an exclusive right to an invention, allowing the owner to prevent non-authorized commercial use of the protected invention by a third party for a limited time period. According to its basic definition, which may vary according to the country providing the protection, a utility model is similar to a patent. Utility models are sometimes called “petty patents” or “innovation patents.” The Mexican Intellectual Property Law (Ley de la Propiedad Industrial) defines a … read more