Trademarks under the North American Free Trade Agreement (NAFTA), with references to the current Mexican law.

Author:Rosas, Roberto
 
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  1. INTRODUCTION II. WHAT IS NAFTA? III. NAFTA, CHAPTER XVII, INTELLECTUAL PROPERTY A. General Aspects 1. Nature and Scope of Obligations 2. More Extensive Protection 3. National Treatment 4. Control of Abusive or Anticompetitive Practices or Conditions B. Trademarks 1. The Concept of Trademarks 2. Rights of the Owner of Registered Trademarks 3. Use of Trademarks 4. Procedure for Trademark Registration 5. Objects that are Distinguished by the Trademark 6. Rules Pertaining to the Notoriety of the Trademark 7. Duration of the Certificate 8. Obligations and Formalities of Using the Trademark 9. License and Transfer of the Trademark 10. Exceptions 11. Causes for Rejection of Registration C. Restraining Application of Intellectual Property Rights 1. Enforcement of Intellectual Property Rights: General Provisions 2. Specific Procedural and Remedial Aspects of Civil and Administrative Procedure 3. Precautionary Measures 4. Criminal Procedures and Penalties 5. Enforcement of Intellectual Property Rights at the Border IV. APPLICATION OF NAFTA TRADEMARK REGULATION TO THE MEXICAN LEGAL SYSTEM A. Trademarks on the Internet V. MEXICO IN THE INTERNATIONAL ARENA OF TRADEMARK LAW A. Mexico's Treaties Involving Trademarks B. Future of NAFTA 1. Trade Balance 2. FTAA 3. TPP VI. CONCLUSION I. INTRODUCTION

    A trademark is any distinctive sign indicating that certain products or services have been manufactured or rendered by a specific person or company. (1) This concept is currently recognized worldwide; however, the origin of trademarks dates back to antiquity when artisans placed their signatures or "marks" on their products containing an artistic or utilitarian element. (2) Through time, these marks have evolved to such an extent that today a reliable and efficient system for their registration and protection has been established. Besides protecting owners of trademarks, this system also helps consumers identify and purchase goods or services, which because of the essence and quality of their "unique" trademarks meet their needs.

    These observations serve as an introduction to this article consisting of five parts. Part two begins with a brief explanation of the North American Free Trade Agreement (NAFTA) leading to part three, the study of trademarks under chapter XVII of the Agreement. It is important to mention that part of the study of definitions and norms that this part contains is based on the trademark doctrine of Spain. (3) Attempting to explain trademarks under NAFTA, excellent Spanish commentators are cited through their works.

    Part four explains how NAFTA's trademark regulations were applied to the Mexican legal system, which allows us to observe the practical implementation of this important Agreement within the legal system of one of the participating member states. It is noteworthy to mention that through international agreements like NAFTA, one can witness the convergence of countries with distinct legal traditions, such as Mexico and the United States, and in large part Canada, and the unification of the asymmetry that exists between these countries. The Agreement's effect on Trade Related Aspects of Intellectual Property Rights (TRIPS) within the Mexican trademark legislation before NAFTA was signed is explained, as is the worldwide impact of the Agreement. Finally, part five discusses the introduction of Mexico into the international trademark arena, sets forth the international treaties that involve trademark matters that Mexico has entered into, as well as those that are still pending, and explains the impact those treaties might have on the future of NAFTA.

  2. WHAT IS NAFTA?

    During the first months of 1990, representatives from the Mexican government initiated talks with representatives of the United States to analyze the possibility of negotiating a free trade agreement between the two nations, which would also include Canada. (4) Signing such an agreement signified one of the boldest and most important steps in Mexico's economic future because it represented a major integration with the strongest and most developed economy in the world, despite distant relations between the two countries. (5) The North American Free Trade Agreement became effective on January 1, 1994, when it was signed by the heads of state of Mexico, Canada and the United States and subsequently ratified by the legislative bodies of each of the three countries. (6) Starting with the establishment of a free trade area agreed to by the three parties, the Agreement is a collection of rules that serve to regulate the exchange of capital, services, and goods, which has occurred among the three countries for some time. (7)

    Previously, these exchanges were regulated by a collection of narrow agreements and provisions, the limited scope of which discouraged long-term investment by introducing uncertainty over the future of mutually agreed upon advantages. (8) Currently, the Agreement provides security and confidence to investors and exporters contemplating exchanges because it sets forth deadlines for reductions in tariffs. (9) Furthermore, rules are established to determine the origin of products and in this manner preference is given to exchanges between the three signatories to the Agreement. (10) Finally, rules and procedures to resolve disputes arising over the interpretation and application of the Agreement were also created. (11) This collection of rules permits the countries involved, particularly Mexico, to increase exports, to attract investments, and to create higher-paying jobs.

    NAFTA acknowledges, through its differential implementation of tariff reduction, the differences in the level of economic development among the three countries. Since NAFTA took effect in 1994, all tariffs and most non tariff barriers on goods produced and traded within North America were eliminated. (12) Thanks to these actions Mexico immediately exported, free of quotas or taxes, textiles, automobiles, gas heaters, livestock, strawberries and other products. Mexico was able to immediately export beer, computer equipment, and television parts to Canada. (13) In turn, Mexico opened its borders to approximately 65 percent of industrial and agricultural exports from the U.S. (14)

    The difference in the timing of tariff reduction acknowledges the asymmetry between the economies of the three countries, and also provides Mexican entrepreneurs additional time to adapt to the new circumstances of the Agreement. It is important to remember that the opening of the Mexican economy to international competition occurred with the admission of Mexico into GATT. (15) Therefore, Mexican companies have known for some time how to face this challenge. (16) For NAFTA, business sectors were consulted before and during the negotiations over the timing and formalities of the reduction of tariffs between Canada and the United States. (17) The Agreement is one of many that Mexico has executed with different countries and regions. (18) Collectively, these arrangements represent the Mexican strategy of extending and diversifying its commercial and economic relationships. (19)

    NAFTA is broken into eight parts and subdivided into twenty-two chapters. The contents (20) of NAFTA are as follows:

    Preamble

    First Part. General Aspects

    Chapter I. Objectives

    Chapter II. General Definitions

    Second Part. Trade in Goods

    Chapter III. National Treatment and Market Access for Goods

    Chapter IV. Rules of Origin

    Chapter V. Customs Procedures

    Chapter VI. Energy and Basic Petrochemicals

    Chapter VII. Agriculture, Sanitary and Phytosanitary Measures

    Chapter VIII. Emergency Measures

    Third Part. Technical Barriers to Trade

    Chapter IX. Standards Related to Measures

    Fourth Part. Government Procurement

    Chapter X. Government Procurement

    Fifth Part. Investments, Services and Related Matters

    Chapter XI. Investments

    Chapter XII. Cross-Border Trade in Services

    Chapter XIII. Telecommunications

    Chapter XIV. Financial Services

    Chapter XV. Competition Policy, Monopolies and State Enterprises

    Chapter XVI. Temporary Entry for Businesspersons

    Sixth Part. Intellectual Property:

    Chapter XVII Intellectual Property

    Seventh Part. Administrative and Institutional Provisions

    Chapter XVIII. Publication, Notification and Administration of Laws

    Chapter XIX. Review and Dispute Settlement in Antidumping and

    Countervailing Duty Matter

    Chapter XX. Institutional Arrangements and Dispute Settlement

    Procedures

    Eighth Part. Other Provisions

    Chapter XXI. Exceptions

    Chapter XXII. Final Provisions

    Annexes

    Agreement of Environmental Cooperation

    Agreement of Labor Cooperation

  3. NAFTA, Chapter XVII, Intellectual Property

    The provisions of chapter XVII regarding legal institutions of intellectual property will be examined first, followed by the specific provisions regarding trademarks and ending with the application of intellectual property rights, with emphasis on trademarks.

    1. General Aspects

      1. Nature and Scope of Obligations

        "Each Party shall provide in its territory to the nationals of another Party adequate and effective protection and enforcement of intellectual property rights, while ensuring that measures to enforce intellectual property rights do not themselves become barriers to legitimate trade." (21) Similarly, in order to implement the aforementioned protection and enforcement, "each Party shall, at a minimum give effect to this Chapter and the substantive provisions of' the different international conventions on intellectual property matters that are mentioned in the corresponding text, and the three countries shall comply with said conventions if a Party has not acceded to them on or before the date NAFTA goes into effect. (22)

      2. More Extensive Protection

        Each signatory country will be able to establish in its own domestic legislation protection for intellectual property rights greater than that required by this Agreement. (23)

      3. National Treatment

        The articles that deal with this provision can be summarized in the...

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