For many years, the Mexican Trade Mark Office (MTO) has been accepting letters of consent from the owners of prior trade mark registrations in order to overcome a reference cited as anticipation in the prosecution of a trade mark application that can be considered as similar or even identical.
Most exclusive rights over industrial property in Mexico require an administrative act from the MTO to exist. However, the truth is that, once these rights are granted, they become of private nature and consequently the owner can freely make use of them.
This freedom of disposition that is congruent with the private nature of the rights means that the owner can allow another mark to coexist with its own even if the MTO considers that the marks are confusingly similar and that allowing its coexistence in the market might cause confusion or lead consumers to error.
Indeed, these sorts of practices are not covered by the Mexican Industrial Property Law (MIPL). But it is also true that the nature of the rights over trade marks imply that, once they are granted, they are governed by the Federal Civil Code (FCC) and not by the MIPL.
Under the FCC legal framework, the consent given by the owner of a trade mark registration should be enough for the MTO overcome a citation and grant the requested trade mark registration since the party that can be affected by this act consented to it.
However, for a couple of months the MTO has been applying a new criteria refusing applications for registration despite the fact that the owner of the cited trade mark registration has expressly consented to its registration.
The MTO argues that as well as just ensuring the rights of trade mark owners, it also has to protect consumers’ interests, a function that is beyond its legal capacities and denaturalizes its role.
Based on this practice, it is clear that, with this new criteria, the MTO is departing from national and international practice to upset the essence of the IP rights. Though it seems that the MTO is not willing to change this new criteria, its consequences will have to be analyzed by the federal courts.
Source: Managing Intellectual Property Magazine, Mar 2008.