TRADEMARK HIJACKING
“SEVERAL CHARACTERS FROM OTHER CULTURES HAVE BEEN REGISTERED IN MEXICO. AT THE IMPI THERE ARE MORE THAN 10 TRADEMARKS FOR CHARACTERS SUCH AS SANTA CLAUS BELONGING TO MEXICAN COMPANIES.”
T ese initiatives come generally from merchants advised by law students. But because Mexican legislation does not acknowledge commercial speculators as a category of applicant, a brand coming from a corporation with reputation will have the same validity as if it came from the speculators, so it can be a challenge to obtain the invalidity of registration of the fi rst applicant’s trademark.
One of the most notorious recent cases in Mexico covers iFone SA de CV v Apple Inc, a dispute between a Mexican and a US company over the former’s ‘iFone’ trademark. T e lawsuit consists of the supposed infringement that the defendant has incurred by the use of a trademark similar in a confusing degree to
another
trademark registered previously for providing telecommunications telephone devices).
services (not the sale of
T is case has caused such a commotion that, before its conclusion, speculators already have begun to use the multinational as a target. T e fi rst case is the registry of ‘iWatch’, a trademark that, in a calculated way, has gone ahead to Apple Inc asking for the registry to distinguish clocks and televisions. T e second case is a little more absurd and is about applications for registration of the ‘iPhone’ trademark to distinguish pastry and confectionery products, among others.
T e Mexican Institute of Industrial Property
(IMPI) statistics demonstrate that only four of each 10 cancellation processes are resolved in favour of the plaintiff .
Trademark designs with adverse effects
T e current Industrial Property Law is strict. It has a list of impediments to registering a trademark, but registering the names of cultural festivities is not included among them, nor is
Obstacles T e regulatory
framework of economic
competition between merchandisers is an everyday subject and Mexico is no exception. Monopolies aff ect private enterprises and the consumer and make the state’s economy ineffi cient. IP is one of the means that some merchandisers have found not only to steal the fame of foreign trademarks, but also to block the entrance of products from competitors into the country in order to avoid
128 World Intellectual Property Review September/October 2013
Rafael Giménez has become an opinion analyst for Mexico’s main magazines and newspapers. He oversees trademark applications and litigates in trademark and mercantile law in Mexico, and is the manager of his own fi rm.
registering religious personages. T e problem for holders of such trademarks is protecting them, due to widespread everyday use of the trademark by others.
In May, Disney Enterprises requested to register a trademark for Dia de los Muertos with the US Patent and Trademark Offi ce (USPTO). T e name is a reference to a Mexican festival with pre-Hispanic origins that is celebrated each November 1, and involves honouring the dead. T e festival is recognised as a part of the world’s cultural heritage by UNESCO. T e news was not well received by many Mexican people, who considered it plagiarism and an attempt to monopolise the Mexican festival in cinematographic works.
Disney’s response was quick, and it cancelled the application for the mark three days later. T e trademark ‘Disney Pixar Día de Muertos’ was also requested for registry at the IMPI, perhaps attempting to make it clear that the intention was not to monopolise the festival per se.
T e story is paradoxical, because in spite of the Disney case, several characters from other cultures have been registered in Mexico. At the IMPI there are more than 10 trademarks for characters such as Santa Claus belonging to Mexican companies.
a reduction in their prices and to increase the popularity of their products or services.
T e use of a trademark in Mexico is not necessary as a requirement to obtain its registration. Use is necessary to avoid that the trademark expires at the request of an interested party, but this can only happen three years aſt er the holder of the trademark requested it. T e result is that if a foreign trademark has been victim of this commercial practice it will have to initiate a cancellation process or ask for the lapsing of the previous registration. It should be mentioned that neither procedure is guaranteed a favourable outcome.
One example is of a single person who registered more than 60 identical or similar trademarks in Mexico, thus obtaining rights of famous trademarks include ‘Ruehl No. 925’ (of Abercrombie & Fitch), ‘G-Star Raw’ (that at the moment is trying to recover the registration), ‘Jack Jones’, ‘Company 8’ and ‘Paper Denim & Cloth’. With so many foreign trademarks under the same holder we can hardly think that the design was created by the same person, but the Mexican laws do not condemn this behaviour.
Rafael Giménez is director of Giménez & Asociados Abogados, SC. He can be contacted at:
rgimenez@gaa.com.mx
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172 |
Page 173 |
Page 174 |
Page 175 |
Page 176 |
Page 177 |
Page 178 |
Page 179 |
Page 180 |
Page 181 |
Page 182 |
Page 183 |
Page 184 |
Page 185 |
Page 186 |
Page 187 |
Page 188 |
Page 189 |
Page 190 |
Page 191 |
Page 192 |
Page 193 |
Page 194 |
Page 195 |
Page 196