Mexican standoff: how the recognition of consent letters is enabling trademark coexistence

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

Mexican standoff: how the recognition of consent letters is enabling trademark coexistence

Sponsored by

olivares-400px.jpg
laptop-3196481.jpg

Several pieces of Mexican legislation in recent years have established the validity of consent letters in formalising the coexistence of identical or similar trademarks, explains Sergio Olivares Nieto of OLIVARES

In the field of industrial property, a letter of consent is a document frequently used internationally to overcome potential conflicts between identical or confusingly similar trademarks. Such a document is basically the written consent of a person or an entity whose rights could be affected by a third party's trademark application.

For a long time, consent letters or other documents such as coexistence agreements were not ruled on in Mexican law, and their acceptance was subject to the criteria adopted by the trademark office, which changed frequently with the changes of the administration in turn.

However, as of August 10, 2018, the date on which the amendments to the Federal Industrial Property Law (a previous law) entered into force, these types of documents were expressly recognized in Mexican legislation as a valid means to allow the coexistence of identical or similar trademarks of different holders.

The role of consent letters in Mexico

The Mexican Institute of Industrial Property considers the consent letter as an element that can be filed by applicants to demonstrate that there is an agreement or consent on the part of the affected party. The submission of a consent letter can help to avoid possible oppositions or refusals to an application for registration of a similar trademark and is likewise a remedy that ensures the possibilities of overcoming an objection raised by the examiner.

The acceptance of such documents, in accordance with the penultimate paragraph of Section XXII of Article 173 of the Federal Law on the Protection of Industrial Property that came into effect in 2020, applies by way of exception in the case of similar marks in degree of confusion or identical trademarks for similar products or services. In this sense, the only situation that is not covered by the exception is identical trademarks for identical products or services.

It is worth mentioning that to obtain a letter of consent, it is necessary to approach the owner of the trademark registration to initiate a negotiation, in which the necessary clauses can be added to achieve the objective of the letter of consent; namely, coexistence in the registration of two similar trademarks.

more from across site and SHARED ros bottom lb

More from across our site

Tim Gilman, who joined Kasowitz alongside three other partners, says he is excited to be part of the firm’s ‘elite’ litigation team
A backlash against a White House video promoting deportation and Casalonga opening a new office in Düsseldorf were also among the top talking points
The firm has brought on board two counsel and an associate to complement two previously revealed partner hires
Bradford Newman, who has joined the firm’s new Silicon Valley office as head of complex technology disputes, discusses plans to build the practice group and attract local talent
Managing IP summarises the highlights from the IP STARS rankings for copyright and IP transactions work, the final firm rankings release of the year
Developments included the first judgment from the Nordic Baltic division, an injunction covering the UK, and a new code of conduct
Alston & Bird acted for InterDigital, while Samsung was represented by Fish & Richardson, during the arbitration process
Powell Gilbert lawyers reveal how they navigated parallel EPO proceedings and collaborated with European peers to come out on top in the Nordic-Baltic Division’s first judgment
The firms posted increases in revenue and profit per equity partner, with both giving a nod to their IP expertise
EasyGroup, the owner of the easyJet airline, said in a press release that UK-based first-instance judges are “less experienced”, bringing a long-running debate back to the fore
Gift this article