Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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

Mexico: New rules on bad faith introduced into Mexican IP law

Sponsored by

olivares-400px.jpg

The Decree on Amendments to Trademark Law in force as of August 10 2018 introduced new legal concepts to the IP Law to update and reinforce the intellectual property system in Mexico.

One of the most important updates was the inclusion of bad faith as a ground for refusal of trade mark applications and for the invalidation of registrations, seeking to prevent the commission of unfair competition acts and to restore the rights of the legitimate owners of trade marks.

Now, Mexican IP law stipulates that bad faith is a relative ground for refusal, giving two examples of cases in which a registration is deemed as applied for in bad faith – when the application is filed in contravention to the proper use, custom and practice of the intellectual property system, commerce or the industry, and when the applicant seeks to obtain an unfair benefit or advantage causing detriment to the legitimate owner of the trade mark.

The IP Law also stipulates two bad faith grounds for invalidation of trade mark registrations. The first one has an immediate precedent in the former articles of the IP Law and deals with registrations applied for and secured by any third party with a direct or indirect relation to the owner of a registered trade mark abroad, to cover the same or a confusingly similar mark in his own name without the express consent of the owner of the foreign trade mark.

The second one is a general cause of invalidation, according to which a trade mark registration will be invalidated if it was obtained in bad faith. This general ground for invalidation balances out the limitations of the first one.

Even though the IP Law defines three cases in which registrations shall be regarded as applied for and obtained in bad faith, the grounds for refusal and invalidation are broadly phrased and include a general bad faith clause which will catch bad faith cases that are not specifically mentioned.

It seems that the legislative intent behind the inclusion of a general bad faith clause in the IP Law is to allow it to work as a safety valve for the system. By doing so, it provides the legitimate owner of a trade mark with a broad cause of action to oppose or invalidate trade mark registrations for cases where the applicant was aware of the existence of a right that he/she is not entitled to and was obtained as a consequence of an unfair or dishonest act.

The incorporation of new bad faith grounds for refusal and invalidation in the IP Law indicates significant progress for Mexico's legal system. However, the development of this concept by the courts will be of importance, so that its definition, requirements and the standard of proof can be specified through case law.

maya.jpg

Manuel Mateos Maya


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 ros bottom lb

More from across our site

Online storytelling platform Humans of Bombay isn’t wrong for trying to protect its copyright, but it could have handled its dispute better
We have started accepting submissions from in-house counsel and teams for the 19th annual Managing IP Awards programme
Patient groups and generics makers may have to bear the brunt of India’s latest attempt at patent reform
Each week Managing IP speaks to a different IP lawyer about their life and career
Paolo Tavolato, who will share the role, said private equity support would help the IP consultancy achieve its ambitious M&A plans
Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP