Registration of Trademark License Agreements

March 18, 2009
Registration of Trademark License Agreements

Many foreign companies have their marks duly registered in Mexico; notwithstanding such, the lack of use of such trademarks by their owners or by an“authorized user” may cause the cancellation of such trademark’s registration if any third party petitions for such cancellation to the Mexican IndustrialProperty Institute, pursuant to the provisions set forth in article 152 of the Industrial Property Law. The effective use in commerce of trademarksregistered in Mexico is done by licensees who have an agreement authorizing them to use such trademarks, but such agreements are often notregistered with the competent authority in Mexico. In accordance to the applicable law, it is necessary for a registered trademark being used incommerce by a licensee (either a company belonging to the same interest group or any other licensee) pursuant to a duly executed license agreement toregister such license agreement with the appropriate authority in order to avoid the cancellation of the trademark registration due to a third party’spetition to cancel such trademark for lack of use.

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