Trademark Registration- Industrial Property Law

By- Lic. Guadalupe Xoca.

On May 18, 2018, a reform of the Industrial Property Law was published in the Official Gazette of the Federation. This reform came into effect on August 10, 2018.

What is the subject of the reform?

The reform foresees, among other matters, the modification to the concept of trademarks, and introduces new forms that can be registered.  This in addition to the provisions for the registration of certification trademarks.

What is a trademark?

A trademark is a distinctive sign that is perceptible by the senses and capable of being represented in a manner that allows the clear and precise determination of the object in order to be distinguished or to denote quality or ownership of products or services of others of the same class or type in the market.

What are the new trademarks eligible for registration as a result of this reform?

Scent trademarks:

The scent trademarks are those that through the aroma produce an olfactory memory, by means of which they become distinguishable from other products or services of the same class.

In order to obtain the registration of scent trademark, it is necessary that the aroma is reproduced visually, emphasizing that the product or service that will be registered is, in itself, the scent.  Likewise, the scent representation may consist of a written form, in order that it transmits the necessary and the exact information to adequately identify the trademark and not allow confusion.  Scent trademarks have been registered in countries such as The Netherlands and the United Kingdom. Some examples are tennis balls “smelling of freshly cut grass”, tires “with the smell of roses” and darts “with bitter beer smell “.

Sound trademarks:

Sound trademarks are those that through sounds are intended to distinguish themselves from other products or services of the same class. They can be musical sounds, sounds existing in nature or produced by machines or other devices.   When these sounds are heard we automatically associate them with the product or service they represent, even if we do not see them. Some examples are the melodies (ringtones) of some telephone companies, sounds reproduced by computer software or the symphonies (intros) at the opening of some television or radio-communication programs.   To obtain the recording of sound trademarks, it is necessary that the sound that is intended to be protected be represented through musical notes, pentagrams or onomatopoeias.

Trade-dress marks:

Trade-dress marks are those that are intended to protect the identity or design of a product or service.  In order to obtain the recording of a trade-dress mark, it is necessary to submit a detailed description of the visual presentation of the product or service, including forms, presentation, colors, and textures, among others. Trade-dress marks range from wrappers to designs of commercial businesses both inside and outside. An example of this is the Apple stores that are characterized by their design and image, both inside and outside.

Hologram trademarks:

Hologram trademarks are those that use the advanced technique of photography that consists of creating three-dimensional images based on the use of light.  To obtain the registration of holographic trademarks, it must be represented in a model that contains a single view of the image that represents the sign, and a description of the same. Finally, please note that the trademark registration depends on the classification of products or services according to the regulations of Nice Classification (NCL)  relating to the international system used to classify products and services for the registration of trademarks, the same international treaty which Mexico is part of since 2001.

Should you have any questions relating to the above, please do not hesitate to contact us.

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