Cancellation of a Registered Trademark

December 17, 2010
Cancellation of a Registered Trademark

Intellectual Property Rights in Mexico, such as patents, utility models, industrial designs, trademarks, commercialnames, etc., may be lost if the authorities declare such rights null upon the petition of an interested third party so longas the required elements under Mexico’s Industrial Property Law (Ley de la Propiedad Industrial) have been shown.However, only in trademarks there is an additional way of losing registered trademark rights, this being known as“trademark cancellation.” This concept applies specifically when a trademark reaches such a high level of knowledgewithin the general public that it becomes confused with the usual or generic name of a product. In particular, article151 of the Industrial Property Law states: “Article 153. Cancellation of a registered trademark shall be proper of theowner of such trademark has caused or allowed the trademark to be transformed into a generic name that correspondsto one or more products or services for which such trademark was registered, so that, in commercial media andgeneralized use by the public, the trademark has lost its distinctive character as a means of distinguishing the productor services to which it applies.” In the marketplace, trademarks may exist precisely in a form that, when they aredisseminated by their owners, little by little become confused with the technical name that should be applied to theproduct and, over the course of time, may cause the unique name to be converted to a common or generic designationfor such product, with the consequent possibility of cancellation. It is recommended that trademark owners simplymake it very clear that the trademark name is precisely that of the registered trademark and among other forms use a® symbol, and at the same time disseminate the technical name of the product in question. In this manner, one mayavoid a determination that the owner of the trademark has “provoked” the trademark to be converted into a genericname. In addition, in regard to “allowing” a protected trademark to be converted to a generic name, this situationoccurs when the owner of the trademark does nothing to intervene, when third parties freely use the registeredtrademark as a generic name and the owner of the trademark takes no legal action to prevent such use, such as filing alegal complaint against such infringing party.

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