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Altering the distinctive sign of a mark

 by Jaime Rodríguez

According to the Mexican Industrial Property Law, trademarks must be used in the national territory as they were registered or with modifications that do not alter their distinctive character. If a trade mark is not used for three years in connection with the corresponding goods or services, it will be vulnerable to a non-use cancellation action. Therefore, not using trade marks as they were registered or using them with modifications that alter their distinctive character might cause the cancellation of the corresponding trade mark registrations, due to lack of use.

The Law does not define “alteration of distinctive character of trade marks”, saying the determination of such a concept should be created by judicial precedent. But there is a lack of such precedent and so we have a very subjective and dangerous scenario, subject to arbitrary acts from the Mexican Trademark Office’s examiners. In our opinion, therefore, analysis of the alteration of the distinctive character of trade marks must not be studied in a literal manner but consider the following criteria:

1) Determine the type of trade mark involved in the analysis. Modifications on nominative marks cannot be equivalent to modifications to word-design, device or three-dimensional marks.

2) Consider the first impression that the mark gives to consumers. When looking at the modified mark, it should not be associated with other registered trade marks owned by other titleholders.

3) Determine the distinctive elements of the mark. Some marks are comprised of descriptive, generic or common usage terms. Modifications to such terms must not alter the distinctive character of trade marks.

4) Analyse the trade mark as a whole. The mark must be associated with the titleholder.

Source Managing Intellectual Property Magazine, Mar 2013