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

The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Partners at Bird & Bird and Taylor Wessing discuss how Saudi Arabia offers unique opportunities for firms dealing in IP and tech
Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Gift this article