Use of a trademark in Mexico
The regulations of the Mexican Law of Industrial Property (MLIP) establish that a trademark is considered to be in use when the goods or services covered have been put in the market, or are available in the market of the country under the trademark, in the amount and in the way that corresponds to the use and custom.
In this regard, we can say that the MLIP provides two different hypotheses to consider whether a trademark is indeed in use. First is that the mark has been put into the market—in other words, that the goods or services covered by the mark can be purchased by Mexican consumers within the Mexican market; second is that the mark is available, or “availability of the mark”.
The latter has been subject to several interpretations that argue what constitutes the use of a trademark, as the mark can be available to be purchased but not necessarily within the market.
An example of the above is use of a trademark through the Internet. Although the MLIP is silent regarding use of a trademark through this means, it is quite frequent nowadays, as several companies do this to save the costs of having a physical presence or employing distributors to distribute their goods in the corresponding country. This latter situation has become a theme of debate: whether a trademark can be considered in actual use in Mexico through this form of commerce.
"THE MLIP ESTABLISHES THAT A TRADEMARK MUST BE USED AS IT WAS REGISTERED OR WITH SLIGHT MODIFICATIONS THAT DO NOT ALTER ITS DISTINCTIVE CHARACTERISTICS."
Other examples of use of a trademark in Mexico can be when some companies use their marks through other companies (licensees). For example, a US-based company can sell its goods in Mexico through a Mexican company, in order to save costs and take advantage of the knowledge of the market that the Mexican company possesses. Likewise, it is very common for foreign companies to make use of their trademarks through their Mexican subsidiaries.
In order for this use to benefit the trademark holder, a licence agreement would have to be recorded with the Mexican Institute of Industrial Property (IMPI), even if it is a subsidiary, as the IMPI considers it a different company.
Further, the MLIP establishes that a trademark must be used as it was registered or with slight modifications that do not alter its distinctive characteristics. Although the MLIP is silent regarding what “slight modifications” may mean, this situation requires companies to have a consultation with an IP attorney, as companies tend to modify their logos over time, to create new brand campaigns or renew their corporate images, without realising that they may be putting a trademark registration in jeopardy.
In summary, we can state that a trademark is considered to be in use in Mexico:
When it is available to Mexican consumers and sales of the goods or services provided can be proved through an invoice containing the following information:
