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Mexico: Mexico fights bad faith trade marks in new ways




In the latest international briefing for Mexico, Adrián Martínez assesses a new amendment to Mexican trade mark law dealing with bad faith marks

In Mexico, we have a serious problem with trade marks registered in bad faith – trade marks that lawfully belong to a given company or individual, usually already registered in other jurisdictions, which are squatted by unauthorised third parties who secure registrations in Mexico.

Although the Mexican Law has included ways to combat bad faith registrations for some time, these actions were regulated in restrictive terms, which caused difficulties when attempting to exercise these actions.

Consequently, the battle to recover squatted trade mark registrations was often rather complicated, involving years of litigation and significant expense. The chances of success were also not always favourable.

However, a recent amendment to the Mexican Law, which came into force on August 10 2018, introduced some interesting changes that help fight back against these practices. Three of the main changes are the following:

  • The concept of bad faith is now defined in an intentionally broad manner, targeting any trade marks registered in a manner contrary to good industrial or commercial practices and customs.
  • Bad faith is now recognised as a prohibition for the registration of trade marks, and thus, it may be invoked in oppositions.
  • In the past, these grounds of invalidation required proof of the existence of a foreign registration and the existence of a direct relationship between the rightful owner and the bad faith holder of the Mexican registration (for example, an employer-employee relationship). Currently, such evidence is not strictly necessary, opening the grounds of invalidation to a myriad of potential arguments that involve bad faith.

The extent and scope of these new provisions must still be tested in higher courts; however, these are positive changes and considerably reduce the efforts lawful owners of trade marks need to make to recover their marks.

Adrián Martínez

Olivares
Pedro Luis Ogazón No 17
Col San Angel
01000 México DF
Tel: +5255 53 22 30 00
Fax: +5255 53 22 30 01


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