1 February 2014Jurisdiction reportsCarlos González

The meaning of marks in Mexico

Failure to mark is not illegal, but marking provides certain benefits to titleholders.

Under this perspective, trademark owners should focus their marking practice to consider the basis and consequences of complying, or not, with the provisions of the Mexican Industrial Property Law (MIPL). They should also take on board some practical considerations before starting use of a trademark, both when the mark is already registered and when it pending registration.

The MIPL regulates, among other IP issues, the proper use of marking in connection with trademarks registered with the Mexican Institute of Industrial Property (IMPI).

In this regard, Article 131 of the law contains the following three options on how to incorporate the designation that a mark is registered in Mexico: “The legend ‘registered trademark’, the letters MR, or the ® symbol may be used only in connection with products or services for which the trademark in question is registered.”

In this context, marking a product/service with the indication that the trademark is registered may prevent third parties from infringing it in connection with a product or service.

Even though there is no explicit legal penalty if the owner of a trademark omits the indication of the legend ‘registered trademark’, or the letters MR, or the ® symbol, on the product or service there is a consequence when a titleholder requests legal measures from the Mexican authorities, under the protection of the law.

"Placing products/services on sale, or putting them in circulation with the indication that they are protected by a trademark when they are not, is considered an infringement of the law."

An omission may be solved by “other means” (as is stated in the law without further definition) that may allow the owner of a registered trademark to inform third parties about the existence of IP rights. In such cases, the benefits to the right holder are the same as if it had marked the product.

In Mexican practice the Mexican Trademark Office allows a trademark owner to substitute the legal markings with a publication in a newspaper of the range of distribution, indicating the registration number, application number, international class, the products/services protected, the name of the owner, etc, in order to give the public the notice of the existence of the IP right.

Even though a failure of marking or publishing trademark information in a newspaper does not mean that the trademark owner may not enforce trademark rights, such an owner may still bring an administrative action but would not be entitled to bring a civil and/or criminal action that could arise from the violation of a trademark registration, nor to request from the IMPI implementation of any injunction measure stated in the MIPL against the infringer.

In consideration of the above, a trademark holder can denote the legend ‘registered trademark’, MR, or the ® symbol, or substitute such marking with a newspaper publication, only in connection with trademarks registered with the Mexican Trademark Office, in the form in which they are registered or with modifications that do not alter their distinctive character, and only in connection with the goods/services for which the same are registered.

Additionally, trademark users should consider the risks of marking goods/services without having a trademark registration in Mexico, because the MIPL establishes that placing products/services on sale, or putting them in circulation with the indication that they are protected by a trademark when they are not, is considered an infringement of the law.

It is always recommended to use a trademark and display the legend ‘registered trademark’, the letters MR or the ® symbol on a product or service, but as long as the mark is registered in Mexico with the Trademark Office, and only in connection with the products or services for which the trademark in question is covered.

Carlos González is a trademark attorney at Becerril, Coca & Becerril, SC. He can be contacted at: cgonzalezc@bcb.com.mx

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