Mexico City, April 1, 2020
On March 27, 2020, the modification to the Mexican Official Standard NOM-051-SCFI/SSA1-2010, GENERAL LABELING SPECIFICATIONS FOR PREPACKAGED NON ALCOHOLIC FOODS AND BEVERAGES-COMMERCIAL AND HEALTH INFORMATION (NOM-051), published on April 5, 2010, was published in the Official Gazette of the Federation and will enter into force in three phases. The verification and surveillance of NOM-051 will be carried out by the Procuraduría Federal del Consumidor (Profeco), the Comisión Federal para la Protección contra Riesgos Sanitarios (Cofepris) and the competent agencies, within the scope of their respective competencies.
This regulation includes the provisions of the new front warning labeling on food and non-alcoholic beverages, which could generate effects with respect to various intellectual and industrial property rights, particularly with respect to trademarks and designs that may be used on the packaging and labeling of prepackaged food products and non-alcoholic beverages.
The modification to NOM-051 establishes the following:
"4.1.5 Prepackaged products bearing one or more warning stamps or the sweetener legend must not:
- a) include on the label children's characters, animations, cartoons, celebrities, athletes or mascots, interactive elements, such as visual-spatial games or digital downloads, which, being directed to children, incite, promote or encourage the consumption, purchase or choice of products with excess of critical nutrients or with sweeteners, and
- b) make reference on the label to elements outside the label for the same purposes as in the preceding paragraph".
As of April 1, 2021, it will be mandatory not to use characters, drawings, celebrities, athletes or mascots that promote consumption in those pre-packaged products that display one or more warning labels of saturated fats, high sugars or the legend of sweeteners, which directly affects the intellectual and industrial property rights protected and regulated in the Industrial Property and Copyright Law. NOM-051 does not define what is understood by "drawings" and other concepts, which generates uncertainty as to which figures are or are not included within this concept, in addition to the fact that such NOM transgresses the obligation imposed by the Industrial Property Law to use the distinctive signs as they were registered, otherwise they may expire due to lack of use. This prohibition could be extended not only to their packaging, but also to advertising, since NOM-051 is ambiguous on this point.
NOM-051 may affect the legal sphere of companies in their strategies for the generation, creation and protection of their intellectual and industrial property, including the registration of trademarks and fictitious characters, marketing strategies regarding the use of these figures, as well as sponsorship contracts for the exploitation of the use of the image of a celebrity, situations that are common according to the uses and customs in the market.
The proposed new regulation is an inferior regulation to the Industrial Property Law that encourages the use of generic packaging, which will represent a competitive disadvantage by preventing the display of graphic elements for products that are manufactured and marketed in Mexico, as well as those that are exported to other countries.
This obliges trademark right holders to design strategies to neutralize the negative impact that NOM-051 will generate in order to preserve their rights and even challenge the unconstitutionality of such provision within thirty days following its entry into force, that is, as of April 1, 2021.
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Juan Carlos Hernández