Nullifying Trademarks Based on Prior Use Outside of Mexico

February 18, 2009
Nullifying Trademarks Based on Prior Use Outside of Mexico

Mexico’s Industrial Property Law (Ley de la Propiedad Industrial) allows trademark owners who have previously registered their marks outside of Mexicoto claim protection of such marks, and potentially obtain a nullification of competing marks registered in Mexico. This is important given that non-Mexicancompanies often find that their trademarks that have been previously registered outside of Mexico are not available in Mexico, and that they can potentiallybe subject to lawsuits for trademark infringement for manufacturing, importing or exporting products to or from Mexico. In this regard, the right to claimtrademark nullity for prior use provides that a claim of rights to such must be made within three years after the trademark was registered in Mexico throughpublication in the Official Gazette, which occurs just after the trademark is registered. In cases where the statute of limitations for presenting a nullity claimhas run, the law protects those who have used the mark previously in Mexico and outside of Mexico against claims for trademark infringement, even thoughit may not be possible for the rightful owner of the mark to obtain registration of such mark in Mexico based on trademark nullity because the statute oflimitations has run. Therefore, it is always a good idea for trademark owners to consider registering their marks in Mexico if they plan to use them there, or atleast periodically review if third parties have registered the same or similar marks in Mexico, which can be done relatively easily by searching the database ofthe Mexican Institute of Mexican Property (Instituto Mexicano de la Propiedad Industrial or IMPI).

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