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

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

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

The tie-up, which will create a firm with a combined revenue of around $2bn, will add around 10 US-based partners to Herbert Smith Freehills’s IP offering
The High Court’s decision in WaterRower v Liking could have signalled the start of a new approach to determining whether designs can benefit from copyright protection
Maohua Wang, head of the IP group at King & Wood Mallesons in China, explains how the firm’s Eversheds deal affected the IP team and how his team meets clients’ litigation needs
Firms that advise generics businesses reflect on whether they’re seeing more aggressive tactics from innovators and how they’re managing their practices
Suspicions concerning AI in the legal space, and another copyright win for Ed Sheeran were among the biggest IP developments this week
Michael Sitzman, a life sciences litigator, explains how McDermott’s busy schedule at the UPC convinced him to join
The UK’s top court will hand down the decision next week, 17 months after hearing arguments in the crucial trademark dispute
Ceyda Maisami explains why HP is becoming more vocal in its SEP arguments and reveals why the company has transformed the way it engages with outside counsel
In the latest UPC update, we examine a ruling on director liability, another on the Gillette defence, and look ahead to cases concerning medical devices
Burak Yüceel outlines six characteristics that make a successful IP practitioner and explains why Alan Turing is an inspiration
Gift this article