Registered Trademarks Unenforceable against Third Parties

August 17, 2008
Registered Trademarks Unenforceable against Third Parties

The registration of a trademark is intended to provide the owners of such trademark with the right to preclude theunauthorized use of such trademark or any trademark deemed sufficiently similar as to create confusion in distinguishingsuch marks. Nevertheless, Mexico’s Industrial Property Law provides three exceptions in which, notwithstanding theregistration of a trademark, exclusive rights to a trademark may not be claimed against third parties, and such exceptionsconsist of the following:1. The trademark does not affect third parties using such trademark in good faith or a similar one prior to the date in whichthe trademark registration application was filed, or the date of first use declared by the owner of such trademark.2. Likewise, the exclusive right to a trademark cannot be enforced against persons using, marketing, distributing, etc. suchtrademark, so long the introduction of such trademark in the market is done legally by the owner of the trademark or alicensee of such trademark. This is the case of parallel imports, which was addressed in a previous edition of this report.3. Finally, a registered trademark cannot be enforced against a third party if such party is a person (individual or entity)using his or her name, or the entity’s name on the products that it produces or distributes, the services it provides tobusinesses, so long such use is performed in its customary manner and that the letters used in such mark are clearlydistinguishable from a homonym already registered as a trademark.In each case described above there must be a careful analysis to determine the scope of a trademark’s exclusivity, since inmany cases a registered trademark cannot be enforced against third parties that fall in any of the exceptions describedabove.

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