Nullification of Trademark

October 17, 2008
Nullification of Trademark

Article 151 of Mexico’s Industrial Property Law (Ley de Propiedad Industrial) establishes five causes for which one may request nullification of atrademark, provided a party has standing to obtain a nullity decision. Of the five causes, two are related to trademarks granted in violation of the law,and trademarks obtained by agents, representatives and distributors of a foreign trademark owner. Such causes may be filed at any time, which is to saythere is no time limit for filing a nullity action. However, the other three causes must be filed within a determined time limit and, if not filed in a timelyfashion, becomes barred by the applicable statute of limitations. Such three causes include: (i) nully of trademark by demonstrating first use in Mexico oroutside of Mexico of the same trademark (which action must be filed three years following publication of the trademark registered in Mexico’s officialgazette); (ii) when a trademark is obtained based on falsified data; and (iii) when a trademark is granted in error, inadvertently, or for lack ofunderstanding by the trademark authorities given the existence of an equal or similar trademark (which actions must be filed within five years followingpublication of the trademark in the official gazette). The above information is relevant because, on many occasions, improperly registered trademarks arenot detected by the interested party until after the applicable time period for filing a protest has run, which makes it important to periodically review themarketplace and available databases in order to detect potential trademark infringement that affect the holders of intellectual property rights in Mexico.

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