Mexico City, April 3rd, 2020.
On March 27, 2020, the amendment to the Official Mexican Standard NOM-051-SCFI / SSA1-2010, ESPECIFICACIONES GENERALES DE ETIQUETADO PARA ALIMENTOS Y BEBIDAS NO ALCOHÓLICAS PREENVASADOS-INFORMACIÓN COMERCIAL Y SANITARIA (General Specifications of pre-packaged food and non-alcoholic beverages- commercial and sanitary information -NOM-051), published on April 5, 2010, which will enter into force in three phases. Verification and surveillance of NOM-051 will be carried out by the Federal Consumer Protection Agency (Profeco), the Federal Commission for the Protection against Sanitary Risks (Cofepris) and the competent agencies, within the scope of their respective competences.
This standard includes the provisions for the new front warning labeling on food and non-alcoholic beverages, which could create effects with respect to various intellectual and industrial property rights, in particular, with respect to the brands and designs that can be used on packaging and labeling of prepackaged food 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 shall not:
a) include on the label children’s characters, animations, cartoons, celebrities, athletes or pets, interactive elements, such as visual-space games or digital downloads, which, being directed at children, incite, promote or encourage consumption, purchase or choice of products with excess critical nutrients or sweeteners, and
b) make reference on the label to elements unrelated to it for the same purposes as the previous paragraph. ”
As of April 1, 2021, it will be mandatory not to use characters, drawings, celebrities, athletes or pets that promote consumption in those prepackaged products that have 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 meant by “drawings” and other concepts, which creates uncertainty about the figures that would or would not be included in this concept, in addition to the fact that said NOM contravenes the obligation imposed by the Law of the Industrial Property to use the distinctive signs as they were registered, otherwise they may expire due to lack of use. Said prohibition could not only extend to its 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 of generation, creation and protection of their intellectual and industrial property, including the registration of fictitious marks and characters, marketing strategies regarding the use of these figures, as well as the 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 new regulation is an rule inferior to the Industrial Property Law that encourages the use of generic packaging, which will represent a competitive disadvantage by preventing displaying graphic elements for products that are manufactured and marketed in Mexico, and those also that are exported to other countries.
Based on the foregoing, trademark rights holders shall design strategies to neutralize the negative impact that NOM-051 will generate in order to preserve their rights and, even, challenging the unconstitutionality of said provision within thirty days of its entry into force. That is, from April 1, 2021.
For more information consult:
The partners of the intellectual property area are at your service for any questions or comments.
Juan Carlos Hernández