Managing Intellectual Property, March 2011
According to Article 153 of the Mexican Industrial Property Law, a mark can be cancelled from the register when it has become in trade and for relevant consumers, the usual name of the products or services it was registered for. This referenced provision regulates the case of marks that – by acquiring of fame and the tolerance of its owner – becomes the usual or generic name of a product or service in trade.
In this regard, it is contradictory that Mexican Law – accepting that distinctiveness can be lost – does not have any express regulation about the acquisition of distinctiveness by use. This lack of positive national regulations implies that secondary meaning is not admitted as an argument for trade mark registration by our Industrial Property Office (IMPI), even if TRIPs states in Article 15 that the members – of which Mexico is one – may condition trade mark registration of non-distinctive signs to the acquisition of distinctiveness by use. So even if a descriptive mark had been used in Mexican trade by one single producer, so long and so exclusively that it had developed secondary meaning to all relevant consumers – referring to a clearly identified origin – IMPI does not consider it in its decisions, arguing the lack of national written regulations.<br<
But distinctiveness can actually be acquired by use in trade, and in fact every day weak trademarks become highly distinctive as a consequence of their use in trade. So distinctiveness is not immutable and can be lost as well as acquired. This is why we believe that by application of TRIPs Article 15, Mexico should incorporate and accept secondary meaning in order to allow the registration of descriptive signs that have acquired distinctiveness by use.