Mexico: Real and effective use of a trademark

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: Real and effective use of a trademark

Sponsored by

olivares-400px.jpg
real-and-effective-use-of-trademark-min-final.jpg

A problem that impacts day to day in our country, and specifically the owners of trademarks, is the deficient or lack of regulation in our legislation regarding what is and what should be understood by "use of a trademark", "use of a trademark in accordance with the customs and habits" and "effective use v token use".

Although in the Inventions and Trademarks Law of 1975 was established a legal definition of effective use of a trademark, nowadays, the current Intellectual Property Law (IPL) does not define what should be understood by use of a trademark nor effective use. In fact, this provision was left in the IPL Regulation, in article 62, which ambiguously states that a trademark is in use "when the products or services distinguished by said trademark have been offered in the market or are available in the market in the quantity and manners that corresponds to the customs and habits in the commerce". However, it was never delimited what "quantity and manners that corresponds to the customs and habits in the commerce" meant.

The foregoing has meant that, more than 20 years after the entry into force of the IPL and its Regulations, there is no uniform criteria of what "use of a trademark" is and, therefore, the "token use" of a trademark is sufficient for the preservation of a registration in our country, since it is up to the judges to determine the customs and habits in each case.

In fact, it is surprising that in Mexico it has not been possible yet to define a criterion of "use of a trademark" and the required evidence to prove it in today's globalised world, especially since not only the international treaties (of which Mexico is a part) require "effective use" of a trademark for the preservation of a registration, but also since all problems regarding "effective use" v "token use" of a trademark have been solved in most parts of the world, achieving a standardised criterion in favour of good faith merchants and sanctioning in all time the symbolic or token use, whose only purpose is the illegal preservation of a registration.

Consequently, it is very important to establish a criterion of real and effective use of a trademark in our country, in order to be consistent with the international jurisprudence related to trademark law.

And for this, it is necessary that the judges harmoniously interpret the provisions of the IPL and its Regulation, as well as the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property, so that the obligation imposed to the owners to use their trademarks, for the purpose of preserving the registration, be understood as an effective use in accordance with the customs and habits in the commerce.

In other words, the use should necessary imply a real presence of the products or services in the market. And in order to prove such use, the judges must take into consideration, in each case, the following factors:

  • Public and external use

  • Real presence in the market

  • Commercialisation to real consumers (non-related to the owner)

  • Commercialisation in accordance with the nature of the products or services

  • Appropriate amount

  • Company size

The above will be the first step to end the illegal preservation of registrations through the symbolic, sporadic, internal and token use of a trademark, and finally provide legal certainty to all applicants and trademark owners in Mexico.

badillo-alejandra.jpg

Alejandra Badillo


Olivares

Pedro Luis Ogazón No 17

Col San Angel

01000 México DF

Tel: +5255 53 22 30 00

Fax: +5255 53 22 30 01

olivlaw@olivares.com.mx

www.olivares.com.mx

more from across site and SHARED ros bottom lb

More from across our site

The case, which could offer clarity on the training of AI models within the context of copyright law, will go to trial in the UK next week
CMS IndusLaw co-founder Suneeth Katarki says he plans to hire a patent team in India and argues that IP should play a major role within full-service firms
Partners at the firm explain why they’ve seen more SEP cases at the ITC, and why they are comfortable recommending the forum to clients
The association, which will head to London in 2026, hosted its flagship event in the Californian city in 2005, 2015 and 2025
Partner Charlie Henn reveals some key achievements from 2024 and explains how the firm takes advantage of its experience
The Delhi High Court declined to stop Dr. Reddy’s from manufacturing Novo Nordisk’s drug, but will continue to hear the Danish company’s injunction application
More than 80 women have entered the top 250 list this year, which includes trailblazing practitioners from more than 50 jurisdictions
IP STARS, Managing IP’s accreditation title, reveals its latest trademark rankings and discloses which firms dominated their respective markets
Today’s rankings release marks a special moment in Managing IP’s calendar, and lawyers should feel proud of their achievements
A new dispute involving Mondelēz and Aldi, and a copyright ruling related to 'Eleanor’ Ford Mustangs were also among the top talking points this week
Gift this article