MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, JUNE 2007
The Mexican Industrial Property Law (IPL) has a chapter dealing specifically with protecting distinctive signs, which establishes different legal structures for trade marks and slogans.
Briefly speaking, the scope of protection granted by trade mark and slogan registrations is largely the same. Slogans are also governed by the Nice international classification system, granted for 10-year periods and renewable for additional 10-year terms. Likewise, trademark and slogan registrations entitle the registrant to enforce his rights against someone attempting to use or register similar trade marks and/or slogans in respect of identical or similar products or services.
The main difference between them is that trade mark protection is granted for any visible sign – such as words, combinations of words (phrases), design elements or combinations words (phrases) and designs – which is intended to distinguish goods/services from others in the market. Therefore, trade marks should be used on the products themselves, in their packaging or identifying the service facilities in order to function as trade marks.
By contrast, slogan protection is granted only for phrases which are intended to advertise products and/or services, and it is not necessary that the proposed phrase is reproduced on the product, on its packaging or identifying the services facilities in order to prove use. It suffices that the phrase is used in any kind of advertising.
The Mexican Trade Mark Office is refusing to register trade marks consisting of phrases, arguing that the appropriate legal means to protect a phrase is a slogan registration. Of course, we do not share this interpretation since the definition of trade mark in the IPL does not preclude combinations of words (phrases) from trade mark protection.
Indeed, the difference in the scope of protection granted by the registration of a phrase as a trade mark or as a slogan depends on the use that is intended for that phrase. If it will identify the products/services of concern, it should be protected as a trade mark. If it will be used only to advertise products and/or services, then it should be protected as a slogan.
In any event, prior to seeking protection for a phrase in Mexico, it is important to ascertain whether the phrase is intended to distinguish goods/services from others in market, or to advertise products and/or services, in order to apply for the appropriate protection.
Source: Managing Intellectual Property Magazine, Jun 2007.