Parallel Imports

September 8, 2011
Parallel Imports

In Mexico, as in the rest of the world, trademarks are registered to allow their owners to use them directly orindirectly, through licensing or other authorizations. Consequently, the use of registered trademarks without theowner’s authorization gives rise to a cause of action that may be brought before the competent trademarkauthorities. Moreover, current Mexican law establishes cases, such as so-called “parallel imports”, in which theuse of a trademark may not be denied by the trademark’s title holder to those who use, commercialize ordistribute such trademark, as long as the introduction of the trademark into the stream of commerce was legallyperformed by the owner or authorized licensee of the trademark, so that the trademarked product is consideredlegitimate. The following requirements apply in order for a product to be considered legitimate in accordancewith the applicable legal provisions in Mexico: (i) that the introduction of the products into the stream ofcommerce of such country is performed by the person who owns the trademark in that country or who is alicensee of the registered trademark; and (ii) that the owner of the registered trademark in Mexico and the foreigncountry are the same person or members of the same economic or common interest group or its licensees or sub-licensees on the date of importation of the products. This event occurs, as in other cases, when the owner of thetrademark issues a license or grants an exclusive distribution right with respect to such trademark in variousjurisdictions, and third parties acquire the products bearing the trademark of the owner of the mark or itslicensees or sub-licensees or distributors authorized in other countries for introduction into Mexico, therebyaffecting the licensee or local distributor in Mexico. Consequently, whenever licenses or exclusive distributionsare granted, it is important for the parties to conclude a written agreement to ensure that distributors or licenseesfrom other countries observe the territorial jurisdiction of their sales and, thus, avoid the existence of so called“parallel imports.”

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