Trademarks System in Mexico

Friday, May 10, 2013

TRADEMARK SYSTEM IN MEXICO

The trademark system in Mexico accepts only single class applications and the Mexican PTO uses the 10th Edition of the Nice Classification. It is therefore needed to file one trademark application per class needed.

Mexico’s trademark system does not have opposition proceedings and therefore the Mexican PTO makes an ex-officio examination about the earlier marks which may be similar to the trademark application.

The proceeding to obtain a trademark application may take approximately 6-8 months since the filing date in case no objections are raised by the Mexican PTO.

In case one objection is raised, the Trademark and Patent Office may take up 4-6 months to decide on the matter.

Conducting a clearance search before filing the application is highly recommended in order to increase the chances to have a successful application. Despite the fact that the results do not offer a 100% of accuracy, the search will disclose all the earlier rights that may be an obstacle for the application.

Should the mark includes a particular logo, it is highly advisable to make a search of logos to reduce any similarity with an earlier right. This search may take approximately 7 days.

A good strategy and local advise is highly recommended if earlier rights are found. That will definitely increase the possibilities of having a successful application.

Should a mark consist of both logo/words, it is highly recommended to apply for both, word mark and figurative mark.

RECENT INTERNATIONAL CHANGES

Mexico recently adopted the Madrid Protocol and the rules concerning the Madrid system are now in use. However, attention must be paid to all applications filed using this system. The maximum period to obtain a response is up to 18 months. Therefore, time is an issue to be considered and especially because the lack of opposition system may delay the application in case an objection to the trademark application is raised by the Mexican PTO.

A clearance search previous to the filing of a trademark application is recommended because that may reduce times and risks.

PERIOD OF USE

The period for non use of a trademark application is 3 years. After 3 years of registration, the owner may be forced to submit proof of use of his trademark registrations. Failing to do so, may result in the loss of rights for the total or part of the rights conferred by the registration.

REQUIREMENTS TO FILE A TRADEMARK APPLICATION

We need the following to file a trademark application:

Complete name of your client

Address of the company

Address of the company in Mexico (if applicable)

Date of start of use of the trademark (if applicable)

Logo if applicable (jpg format)

Confirmation of the list of goods or services in English 10th version of the Nice Classification

POWER OF ATTORNEY

No power of attorney is required in Mexico to represent a client for filing and prosecution, however, it is recommended that we receive the PoA at least by e-mail duly signed by the legal representative of the client and also signed by two witnesses with original of the copy of the passport of the signatories. We will ask you to fill in the information concerning the notary power of attorney given to the legal representative of the client in the power of attorney.

ACTIONS TO FOLLOW AGAINST A SIMILAR TRADEMARK REGISTRATION TO AN EARLIER RIGHT

In case a trademark registration is found to be similar to an existing earlier right of another party, there is a 3 years term to file action of invalidity. This action may be brought to the Mexican PTO before the term of 3 years after the date of granting the registration. The grounds of the action may be those of similarity of goods/services and/or similarity of signs.

 

 

Paralegals and Administrative Staff

Wednesday, September 26, 2012

Under construction

 
 
 

Apple wins lawsuit against Samsung

Friday, September 07, 2012

After a year of scorched-earth litigation, a jury decided Friday that Samsung ripped off the innovative technology used by Apple to create its revolutionary iPhone and iPad.

The jury ordered Samsung to pay Apple $1.05 billion. An appeal is expected.

Apple Inc. filed its patent infringement lawsuit in April 2011 and engaged legions of the country's highest-paid patent lawyers to demand $2.5 billion from its top smartphone competitor. Samsung Electronics Co. fired back with its own lawsuit seeking $399 million.

But verdict, however, belonged to Apple, as the jury rejected all Samsung's claim against Apple. Jurors also decided against some of Apple's claims involving the two dozen Samsung devices at issue, declining to award the full $2.5 billion Apple demanded.

However, the jury found that several Samsung products illegally used such Apple creations as the "bounce-back" feature when a user scrolls to an end image, and the ability to zoom text with a finger tap.

Breaking down the verdict

As part of its lawsuit, Apple also demanded that Samsung pull its most popular cellphones and computer tablets from the U.S. market. A judge was expected to make that ruling at a later time.

During closing arguments at the trial, Apple attorney Harold McElhinny claimed Samsung was having a "crisis of design" after the 2007 launch of the iPhone, and executives with the South Korean company were determined to illegally cash in on the success of the revolutionary device.

Samsung's lawyers countered that it was simply and legally giving consumers what they want: Smart phones with big screens. They said Samsung didn't violate any of Apple's patents and further alleged innovations claimed by Apple were actually created by other companies.

Samsung has emerged as one of Apple's biggest rivals and has overtaken Apple as the leading smartphone maker.

Samsung's Galaxy line of phones run on Android, a mobile operating system that Google Inc. has given out for free to Samsung and other phone makers.

Samsung conceded that Apple makes great products but said it doesn't have a monopoly on the design of rectangle phones with rounded corners that it claimed it created.

Google entered the smartphone market while its then-CEO Eric Schmidt was on Apple's board, infuriating Apple co-founder Steve Jobs, who considered Android to be a blatant rip off of the iPhone's innovations.

After shoving Schmidt off Apple's board, Jobs vowed that Apple would resort to "thermonuclear war" to destroy Android and its allies.

The Apple-Samsung trial in San Jose came after each side filed a blizzard of legal motions and refused advisories by U.S. District Judge Lucy Koh to settle the dispute out of court. Deliberations by the jury of seven men and two women began Wednesday.

Samsung has sold 22.7 million smartphones and tablets that Apple claimed uses its technology. McElhinny said those devices accounted for $8.16 billion in sales since June 2010.

Apple and Samsung combined account for more than half of global smartphone sales.

From the beginning, legal experts and Wall Street analysts viewed Samsung as the underdog in the case. Apple's headquarters is a mere 10 miles from the courthouse, and jurors were picked from the heart of Silicon Valley where Apple's late founder Steve Jobs is a revered technological pioneer.

While the legal and technological issues were complex, patent expert Alexander I. Poltorak previously said the case would likely boil down to whether jurors believed Samsung's products look and feel almost identical to Apple's iPhone and iPad.

To overcome that challenge at trial, Samsung's lawyers argued that many of Apple's claims of innovation were either obvious concepts or ideas stolen from Sony Corp. and others. Experts called that line of argument a high-risk strategy because of Apple's reputation as an innovator.

Apple's lawyers argued there is almost no difference between Samsung products and those of Apple, and presented internal Samsung documents they said showed it copied Apple designs. Samsung lawyers insisted that several other companies and inventors had previously developed much of the Apple technology at issue.

The U.S. trial is just the latest skirmish between the two tech giants over product designs. Apple and Samsung have filed similar lawsuits in eight other countries, including South Korea, Germany, Japan, Italy, the Netherlands, Britain, France and Australia.

Samsung won a home court ruling Friday in the global patent battle against Apple.

Judges in Seoul said Samsung didn't copy the look and feel of the iPhone and ruled that Apple infringed on Samsung's wireless technology.

However, the judges also said Samsung violated Apple's technology behind the feature that causes a screen to bounce back when a user scrolls to an end image. Both sides were ordered to pay limited damages.

The Seoul ruling was a rare victory for Samsung in its fight with Apple. Those arguments previously have been shot down by courts in Europe, where judges have ruled that they are part of industry standards that must be licensed under fair terms to competitors.

The U.S. case is one of some 50 lawsuits among myriad telecommunications companies jockeying for position in the burgeoning $219 billion market for smartphones and computer tablets.

Source: Fox News

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