On May 12, 2021 the Adjunct General Director of el Instituto Méxicano de la Propiedad Industrial (IMPI), or, México’s Patent and Trademark Offices, came to Pasadena to speak at an event hosted by my offices. I had the privilege of also speaking following his informative presentation on the changes to México’s Intellectual Property landscape in light of the United States- México-Canada (USMCA) Agreement.
In the US it is the USMCA, in México is the T-MEC, and in Canada, (if it interests you) it is the CMUC. All reference the same agreement.
The real changes brought about by the USMCA as applied to México as far as Intellectual Property (IP) is concerned is that there is no longer a requirement to record at IMPI, licenses for Intellectual Property in order to enforce your IP rights. This allows persons with IP licenses in Mexico to keep their licenses out of the public eye and removes an extra requirement if one wanted to enforce a license.
As long as I can remember, the United States Patent and Trademark Office (U.S.P.T.O.) had never had a mechanism, let alone a requirement to record licenses. It is recommended in either country, that an owner of a Trademark or Patent record any assignment of their rights.
A notable difference between Trademark filings in the two countries is that the U.S.P.T.O. requires a foreigner to hire a U.S. attorney in good standing with any state bar to file documents relating to a trademark, including foreign marks filed by way of the Madrid Protocol. In contrast, at IMPI there is no requirement that a trademark filing be handled by a licensed Mexican attorney.
Of interest is that in México, there is a new law that prohibits the advertisement of drawings of characters like Chester Cheetah and Tony the Tiger on the packaging of the high sugar and/or fat products they are connected to. The idea is that by disassociating the enticement of the fun characters with the unhealthy product, children will be less attracted to the unhealthy product. In response, it appears companies have then begun decorating their entire packaging with Chester Cheetah’s orange and black feline markings.
What I found fascinating was that built into IMPI’s trademark application is an option to request your mark be deemed famous. If you can prove at the application stage that your mark is famous, which we are assured is extremely difficult to do, then you can enjoy a Trademark Guelaguetza; you can market and sell your goods or services across the board in all forty-two classes spreading your wings across every available good or service. So, for example, the registered owner of the famous mark for the bread, BIMBO, can use their mark in México to, manufacture cars, service home loans, sell high-end designer handbags, spurs, and even tequila, even though in México, they only had to prove their fame for making bread.
In comparison, at the U.S.P.T.O, there is no option in the application stage to request the mark be deemed famous, and a famous mark does not get such privilege across every international class.
I wonder whether I would be confused if I came across cowboy boots bearing the mark, APPLE, and whether I would wonder whether that tech giant thought they would take a stab at selling apparel.