The New Product Labelling Provision may Jeopardise your Trademark Registration

In the midst of the health contingency caused by the Covid-19 pandemic, the latent entry into force of the reform to article 4.1.5. of Mexican Official Standard NOM-051-SCFI/SSA1-2010 on GENERAL LABELLING SPECIFICATIONS FOR PRE-PACKAGED FOOD AND NON-ALCOHOLIC BEVERAGES, COMMERCIAL AND HEALTH INFORMATION, in addition to being a product of an effort by health institutions in the fight against obesity and in the achievement of a visible, clear and effective labelling for the benefit of consumers, it is already a red alert for many brands made up of characters, drawings and images of celebrities because they are now forbidden to be used in the packaging of their products.

The ban on new labelling has led companies to incur large costs in redesigning their packaging and a great fear of losing the asset that for years was their biggest emblem and link to the public, as well as the dominant differentiating factor of their corporate identity, losing in this way singularity and originality.

If the proprietor of a trade mark cannot use it as it was protected, it could cause him to lose recognition and create confusion. However, if that continues for a longer period of time, it could have far-reaching legal consequences, since the Industrial Property Law (LPI) stipulates as an obligation for trademark owners, use them as they were registered and without modifications that alter their distinctive character.

Because the Mexican Official Standard NOM 051 banks many companies not to use their brands routinely on their products, because they contain characters, drawings, images of celebrities or athletes, will be violated by not being able to comply with the LPI and risk not being able to declare the actual and effective use of their trademarks in the time and manner indicated by this law.

In the event that the proprietors of the trademarks do not comply with the actual and effective use and verification thereof, the Mexican Institute of Industrial Property, may declare the registration of the trademark expired, that is, they would lose the exclusive right to use and oppose others using their trademarks, opening up the possibility of a third party attempting to appropriate them.

To make matters worse, by having to modify the labelling of the packaging of their products, companies run the same risk as with brands by not using them as they were registered.

If you are a producer of processed foods or pre-packaged non-alcoholic beverages and want to know more about the measures, risks and strategies needed to protect your brand and designs against these new requirements, Go to Bandala | Díaz | García we have the advice you need.