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Editorial

ADVERTISING IN MEXICO: COMMENTS UNDER AN INTELLECTUAL PROPERTY LAW PERSPECTIVE

Advertising in Mexico is governed by multiple bodies of law including for at least seven Federal Laws, five Regulations also of Federal application, a number of the so-called Mexican Official Standards (NOM's) and certain other laws and regulations applicable into specific States within the Republic of Mexico. All of them are focusing to establish the form and manners for producing and communicating advertising of products and services in Mexico.

By Carlos Trujillo Uhthoff, Gomez Vega & Uhthoff, S.C.  

Advertising in Mexico is governed by multiple bodies of law including for at least seven Federal Laws, five Regulations also of Federal application, a number of the so-called Mexican Official Standards (NOM's) and certain other laws and regulations applicable into specific States within the Republic of Mexico.  All of them are focusing to establish the form and manners for producing and communicating advertising of products and services in Mexico.

From all of the mentioned regulatory frame, the Federal Law for the Protection of Consumers (FLPC) is of particular importance since it can be considered as the main legal source establishing the very general rules to be observed for advertising a product or service.  Article 32 of the FLPC establishes that advertisement of products or services must be truthful, verifiable and it must not contain texts, dialogs, sounds images, marks, geographical indications and other descriptions that could induce consumers to errors or confusions.

Comparative advertising is allowed by the FLPC provided that the information about the products or services being compared is not "deceptive" or "abusive".  "Deceptive" or "abusive" information is defined by the law as that inducing consumers to error or confusion due to the inexact, false, exaggerated, artificial or tendentious form in which information is presented to consumers.

The mentioned general principles have full application in the industrial property field. 

Thus, regarding patents, advertisement must be accurate and must not exaggerate or have erroneous indications to create false expectations about the patented product or process offered to consumers.

The same trend must be followed in the trademark field. Advertisement must be accurate and must not create error or confusions on consumers believing that they are acquiring a product or service under the wrong assumption that they have characteristics or elements better than the real ones or under fictitious conditions apparently better than the ones offered by competitors.

Failing to comply with the above general provisions constitutes and infringement against the FLPC which is legally punishable by the Consumer's Federal Bureau, who will be entitled to:

  1. order to the infringing party to refrain form continuing with the communication of the advertising;
  1. order to the infringing party to sufficiently correct the advertising and,
  1. impose a fine starting from $332.52 and up to $1,064,044.07 Mexican Currency.

Regarding comparative advertising, when it is done without observing the rule of not providing "deceptive" or "abusive" information in respect of the product or service being compared in the advertising to gain commercial advantages, this may be considered under the Industrial Property Law as an unfair competition offense and is expressly classified as a trademark infringement according to the provisions of paragraph X of Article 213 of the Industrial Property Law, giving the offended party the opportunity to sue the alleged infringer before the Mexican Institute of Industrial Property for obtaining an order to refrain from continuing with the advertising and the imposition of a fine.  This may also opens the possibility for the offended party to sue the infringer for damages in a separate trial before a Federal Civil Court.

The FLPC and the Industrial Property Law coincide to accept comparative advertising, provided that it only has informative purposes and not permitted if the intention is to deceive or damage the reputation of the mark included in the advertising.

As another important consideration regarding mark and patent advertising in Mexico, it is important to have in mind that there is no obligation to include in advertising materials indications or references about the registration status when the mark or patent referring to the advertised product or service is still in an application stage.  Though it is possible to include a legend that the prosecution of the corresponding registration is in progress. The use, however, of signs or legends for a mark of patent that they are registered with the Mexican Institute of Industrial Property when they are actually not, constitutes a law infringement punished by the mentioned Institute through the imposition of a fine.  On the other side, the lack of using adequate legends or indications in the labels and advertising of products or services to refer that they are covered by a patent or a trademark registration, produces the inability for the mark or patent owner to adopt precautionary measures (such as the seizure of products) when an action is brought against an alleged infringing party and the loss of the right to sue for damages in the event that a final decision declaring the trademark or patent infringement is ruled upon the given case.  

Advertising has also another meaning in the trademark field.   Under present practices, advertising is an element to demonstrate effective trademark use in Mexico.  When use of a trademark is interrupted for more than three consecutive years, grounds for canceling the corresponding trademark registration are established.  In such event the party facing a cancellation action over its trademark registration on grounds of non-effective use of the mark in Mexico, requires to demonstrate that use were not interrupted during the preceding three years as of the filing date of the cancellation action.  Advertising either in writing or through electronic media, among other elements, constitutes adequate proof of trademark use in Mexico. 

On the other hand, the new provisions in the Industrial Property Law contemplating the so-called "declarations of protection for famous and well-known trademarks",  allude to advertising as a fundamental element that needs to be shown and credited for obtaining the corresponding declaration of protection over this special kind of trademarks.  In this regard, paragraphs VII, VIII and IX of the new Article 98 bis-2 of the mentioned law, stress the importance of advertising for considering a mark as a famous or well-known trademark.  According to the mentioned paragraphs, the applicant willing to obtain a declaration of protection for a famous or a well-known trademark, among other information, should provide to the Mexican Institute of Industrial Property documents and evidence to demonstrate:

  1. the kind of media used to advertise the mark in Mexico and if applicable, in foreign countries;
  1. the effective advertisement time invested to promote the mark in Mexico and if applicable, in foreign countries and,
  1. the amounts invested in advertising the mark in Mexico and in foreign countries during the three last years.

Addressing now the copyright field regarding advertising in Mexico, there are three issues that we believe of particular importance to comment on.  One is the fact that all original artistic elements present in advertising such as texts, illustrations, photographs and music can be considered as protectable matter under the copyright.  Protection thereof is automatically granted at the very same time in which the works are fixed in a material support.  Now, being the works involved in advertising copyrightable matter, they can be subject of registration before the National Copyright Institute.  A complete advertising campaign as a whole could not be submitted for registration with the mentioned Institute, since there is not a specific category in which they can be classified for the effects of their registration.  But when the elements conforming the advertising campaign are individually taken, they will classify in the different categories of works foreseen in Article 13 of the Federal Copyright Law. Different from an unfair competition or a trademark infringement action which by definition of law should follow a so-called "administrative" proceeding before the Mexican Institute of Industrial Property (that is, there is no judicial intervention in the first stage of the proceedings and up to the decision as to whether the infringement has committed or not by the alleged infringrer, since the mentioned Institute is part of the executive not the judicial branch), the main advantage to adopt a copyright protection approach for the elements of an advertising campaign, will be the possibility to initiate criminal proceedings against parties copying the works used to advertise a product or service into other advertising materials.  In this event the action against infringers initiates before the Federal Prosecutors Office and the trial takes place before a Federal Judge.

On the other hand, the Federal Copyright Law foresees the so-called "agreements for advertising" having the purpose to authorize the use of works and artistic interpretation of works into advertising materials.  Under the advertising scheme created around this type of agreements, it is important to have in mind that authors and artists authorize the use of their works and their interpretations for specific terms defined by the Federal Copyright Law in its Article 74.  In such sense when an advertising campaign is developed around an advertising agreement, or if in any manner an agreement of this nature is entered with an into the authors and artists that created the works and interpretations used in the advertising, the initial term by operation of law during which the advertisement can be communicated to the public will be of six months starting as of the date in which the advertising is made available to consumers.  After the initial six-month term, the use of the advertising will be subject to the payment of an economic compensation for the authors and artists in an amount for at least equal to the one initially paid to them when entering into the agreement. This provision will be applicable for successive six-month terms until reaching three years as of the first communication of the advertisement, time when the authors or artists will have the right to make the party using the advertisement continuing to do so, which opens the possibility for authors and artists to renegotiate the terms and conditions governing the use of the advertisement or request the payment of additional amounts for granting a new authorization for the use of the advertising containing their works and interpretations.

A final element that can also have an impact regarding advertisement and copyrights in Mexico is the protection granted under the Federal Copyright Law to original promotional mechanisms through the obtention of a registration certificate so-called "reservation of rights", which is applicable for other kind of distinctive elements, such as names for serial publications, names of t.v. or radio programs, artistic names and characters.  Through this protection, original promotional mechanisms will have an non-extendable five-year term of exclusive use on behalf of the entity or individual that developed it.  For obtaining the "reservation of rights" over this kind of promotional materials, they must have novelty in the sense that no other similar mechanisms are known in Mexico or in foreign countries and they must offer to consumers the possibility to acquire an additional product or service different than the one that is advertised through the mechanism in a more favorable form than the one usually present in the Mexican commerce.

There are a lot of issues involved in matter of advertisement in Mexico for the multiple laws and regulations that are applicable.  Hopefully the reader of this article will have at least a general background regarding some facts present in the day-to-day practice for advertisement, when it is view under an intellectual property law perspective for the case of Mexico.

For more information please visit www.uhthoff.com.mx

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