Mexico: Real and effective use of a trademark

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

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

Tamar Gomez, our latest ‘Five minutes with’ subject, discusses Markush formula descriptions, spinning plates and why her role is both exhilarating and terrifying
The location will be easily accessible for delegates visiting London for the INTA Annual Meeting
In the second instalment of our data-led special reports, Managing IP speaks to the most prolific representatives for REUDs on how they manage their team and filing strategies
Foreign remittance requirements put additional administrative burden on Indian law firms and strain their relationship with foreign associate firms, according to practitioners
IP leaders met in San Francisco this week to discuss patent pools, SEP licensing, and how shifting geopolitics is shaping the future of innovation
View the 2025 Social Impact shortlist celebrating the region's change-makers
News of Elon Musk’s xAI suing OpenAI and the latest statistics from UK’s patent box system were also among the top talking points
The patent pool operator is launching new offerings covering semiconductor technologies amid the rapid adoption of AI and tech
Achim Krebs of HGF and Filip De Corte of Syngenta provide an overview of compensatory term rights for plant protection products around the world
A Full Federal Court ruling on the patent-eligibility of computer-implemented inventions in Australia could pave the way for more filings
Gift this article