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JURISDICTION REPORT: MEXICO


USE OF A TRADEMARK IN MEXICO


Eugenio Ruiz Becerril, Coca & Becerril, S.C.


Te regulations of the Mexican Law of Industrial Property (MLIP) establish that a trademark is considered to be in use when the goods or services covered have been put in the market, or are available in the market of the country under the trademark, in the amount and in the way that corresponds to the use and custom.


In this regard, we can say that the MLIP provides two different hypotheses to consider whether a trademark is indeed in use. First is that the mark has been put into the market—in other words, that the goods or services covered by the mark can be purchased by Mexican consumers within the Mexican market; second is that the mark is available, or “availability of the mark”. Te latter has been subject to several interpretations that argue what constitutes the use of a trademark, as the mark can be available to be purchased but not necessarily within the market.


An example of the above is use of a trademark through the Internet. Although the MLIP is silent regarding use of a trademark through this means, it is quite frequent nowadays, as several companies do this to save the costs of having a physical presence or employing distributors to distribute their goods in the corresponding country. Tis latter situation has become a theme of debate: whether a trademark can be considered in actual use in Mexico through this form of commerce.


Other examples of use of a trademark in Mexico can be when some companies use their marks through other companies (licensees). For example, a US-based company can sell its goods in Mexico through a Mexican company, in order to save costs and take advantage of the knowledge of the market that the Mexican company possesses. Likewise, it is very common for foreign companies to make use of their trademarks through their Mexican subsidiaries.


In order for this use to benefit the trademark holder, a licence agreement would have to be recorded with the Mexican Institute of Industrial Property (IMPI), even if it is a subsidiary, as the IMPI considers it a different company.


Further, the MLIP establishes that a trademark must be used as it was registered or with slight modifications that do not alter its distinctive characteristics. Although the MLIP is silent regarding what “slight modifications” may mean, this situation requires companies to have a consultation with an IP attorney, as companies tend to modify their logos over time, to create new brand campaigns or renew their corporate images, without realising that they may be putting a trademark registration in jeopardy.


In summary, we can state that a trademark is considered to be in use in Mexico:


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“THE MLIP ESTABLISHES THAT A TRADEMARK MUST BE USED AS IT WAS REGISTERED OR WITH SLIGHT MODIFICATIONS THAT DO NOT ALTER ITS DISTINCTIVE CHARACTERISTICS.”


When it is available to Mexican consumers and sales of the goods or services provided can be proved through an invoice containing the following information:


• Tat it was issued by the holder of the mark or recorded licensee. • Tat it was issued in Mexico. • Te name of the mark, as it was registered. • A description of the goods or services covered. • Te date of issuance.


• When it is used through a licensee that has been duly recorded before the IMPI.


As previously explained, in order for use conducted by a third company to benefit the trademark holder, it must be recorded as a licensee, even if the company using the mark is a subsidiary of the trademark holder.


It is important to use the trademark as stated by the MLIP, in order to avoid its cancellation on the grounds of lack of use and to be able to renew the same 10 years aſter its filing date.


Eugenio Ruiz is an attorney at law at Becerril, Coca & Becerril, S.C. He can be contacted at: eruiz@bcb.com.mx


World Intellectual Property Review November/December 2011 www.worldipreview.com


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