Is it legal to banish characters and celebrities from products?
J. Rafael Amador Espinosa
The Mexican Official Standard NOM-051-SCFI/SSA1–2010 General Labelling Specifications for Pre-packaged Foods and Non-Alcoholic Beverages — Commercial and Health Information, published on April 5th, 2010 (“NOM-051-SCFI/SSA1–2010”), was recently amended for the means of ensuring the commercial information to achieve and effective consumer protection.
This amendment was published on the Official Federal Gazette on March 27th, 2020, just at the beginning of the extraordinary health measures taken by the Federal Government in response to the health emergency caused by the SARS-CoV2 virus.
The NOM-051-SCFI/SSA1–2010 amendment expressly refers to the reform of the General Health Law published on November 8th, 2019, regarding the overweight and obesity issue and the labelling of food and non-alcoholic beverages. This to establish the basis for the creation of a front labelling system with the purpose of giving the consumer a true, direct, simple and visible warning of products that exceed the maximum limits of energy content, added sugars, saturated fats, sodium, among others.
Therefore, it is important to highlight the content of two highly important articles of the General Health Law that have recently been amended. The addition of a second paragraph to Article 210 and the amendment of Article 212, which provides:
In harmony with international guidelines that the Mexican State has obliged itself to comply with, the purpose of the NOM-051-SCFI/SSA1–2010 amendment is to establish commercial and health information that must be included in the labelling of pre-packaged products intended for the final consumer. Said information will allow the consumer to determine the characteristics of the products since the front labelling system will have clear and truthful warnings about the content of critical nutrients and ingredients that represent health risks in excessive consumption.
This front labelling system must be placed on the main display surface of the product, which, according to the NOM -051-SCFI/SSA1–2010, must show in a truthful, direct, clear, simple and visible manner, when a pre-packaged product presents an excess content of energy, critical nutrients and ingredients that represent a health risk in excessive consumption, which shall be seen as follows:
The seals shall be placed from left to right in accordance with the following order:
- Excess calories
- Excess sugars
- Excess saturated fats
- Excess trans fat
- Excess Sodium
The amendment also establishes the obligation to include captions for products that required it, such as:
These captions must be placed on the upper right-hand side of the main display surface and if the pre-packaged product contains any of the seals of the front labelling system, these captions must be placed under such seals.
All of the above represent an inconvenience due to the cost of adapting the pre-package of the products to said changes.
Moreover, a NOM should not include prohibitive facts, nor limit the marketing or sale of certain pre-packaged products. The Mexican Federal Law of Metrology and Standardization itself establishes that the object of a NOM is to establish rules, specifications, attributes, guidelines, characteristics or requirements applicable to a product, process, installation, system, activity, service or method of production or operation, as well as those concerning terminology, symbols, packaging, marking or labelling and those concerning compliance or application, which are far exceeded by specification 4.1.5 of the NOM-051-SCFI/SSA1–2010 that indicates:
For that matter, some questions arise: Does the amendment of NOM-051-SCFI/SSA1–2010 comply with the international treaties executed by Mexico? Does specification 4.1.5 of the amendment of NOM-051-SCFI/SSA1–2010 comply with the Mexican Federal Law of Metrology and Standardization? Does the amendment of NOM-051-SCFI/SSA1–2010 contain proportional measures to its purposes? Does the use of trademarks, characters and image of athletes and celebrities conflict with the right to information and the right to health?
In our opinion, the right of consumers to be informed does not conflict with the right of owners or commercial intermediaries to exploit their intellectual property rights and to carry out their own marketing and sales strategies with the inclusion of the means that they consider relevant to achieve their commercial objectives. Foremost when this is prohibited from the context of an Official Standard that by its very nature is intended to be of a technical nature.
By the execution of contracts for the use of image it has been common for companies to use the image of athletes on the wrapping or packaging of their products during events such as the Olympic Games or World Cup, some of these products have even become collector’s items and achieved great value. This will no longer be a possibility once amendment to the NOM-051-SCFI/SSA1–2010 is in force.
Likewise, it is contrary to the constitutional assumptions to eliminate the right of traders to distinguish their products. How could we know the business origin, in view of these prohibitions?
It is important to highlight that the NOM-051-SCFI/SSA1–2010 far exceeds the purpose of keeping consumers informed, by falling into a prohibition, which is not based on the purposes of the NOM-051-SCFI/SSA1–2010 or the powers conceived by the Mexican Federal Law of Standardization and Metrology.
With respect to international treaties, we mainly highlight three.
Firstly, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) which in its article 8, clearly states:
Secondly, the North American Free Trade Agreement (NAFTA), which, in its respective chapter on intellectual property, number 1708.10 provides that, “No Party may encumber the use of a trademark in commerce by special requirements, such as a use that reduces the trademark’s function as an indication of source or a use with another trademark”.
Finally, we refer to the Treaty between Mexico, United States and Canada (USMCA) that will enter into force on July 1, 2020, which in its Article 20.3.1 states that: “A Party may, in formulating or amending its laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that those measures are consistent with the provisions of this Chapter”.
In this sense, we find that the common denominator of the international treaties executed by Mexico in relation to intellectual property is expressly understood as the prohibition to impose obstacles to the use of the trademark in commerce.
NOM-051-SCFI/SSA1–2010, as amended, will enter into force in a staggered manner. We emphasize that on October 1st, 2020, clauses 4.5.3.4 to 4.5.3.4.7, as well as 7.1.3 and 7.1.4 will enter into force, and on April 1st, 2021, clause 4.1.5, that is, the prohibition of the use of trademarks and copyrights, under the penalties established in the Mexican Federal Law of Standardization and Metrology (which is currently under discussion to be amended before the Mexican Senate).
As a final comment, the modification of NOM-051-SCFI/SSA1–2010 has created a breach between the private sector and the government. Additionally, several owners of trademark registrations, copyrights and Reserves of Rights to the Exclusive Use of Characters are unpleased because of the possible loss of an asset that could be (or indeed is) the most valuable of their companies, that is, the exploitation of their intellectual / industrial property assets, a serious encumber in trade freedom.
Our intellectual property team has more than 15 years of experience defending owners of industrial and intellectual property rights in Mexico. The modification to the NOM-051-SCFI/SSA1–2010 is, from our team’s point of view, unconstitutional for the reasons indicated in this informative note, so if your company is in one of the sectors affected by this modification, do not hesitate to consult us for advice.
Please note that as of April 1st, 2021, nutritional information and seals, if any, may not be superimposed on packaging, this provision applies even for imported products.
