Keeping the records straight

24-02-2017

Emilio Albarran

A common enquiry from our clients is whether corporate changes should be recorded at the Mexican Institute of Industrial Property (IMPI) and what the legal consequences of not recording such changes can be.

The most common corporate changes regarding intellectual property matters are 1) changes in IP ownership (eg, assignment/transfer of rights, mergers, etc); 2) changes in IP exploitation status (eg, licensing agreement, security interest); and 3) changes in IP owner information (eg, change of name and/or address, legal status, inventor).

When a corporate change in the ownership of a trademark, patent or design is not recorded before the IMPI, some legal consequences can arise.

The fact that the owner of a trademark, patent or design does not record a change of ownership will certainly affect the right of the new owner to defend its IP rights.

If the current IP rights owner needs to enforce or defend its rights, it will need to record the corporate change (which takes from one to three months) before taking any legal action. The ownership of the mark, patent or design will not be updated until then and the new owner will not be served with any official communications from the IMPI in the meantime.

If the owner of the mark, patent or design does not record a licensing agreement, security interest or cancellation of either at the IMPI, the agreement will be valid between both parties but will not produce effects against third parties.

Even when the national legislation provides that trademark use by a licensee will benefit the owner only if the agreement is recorded before the IMPI, there are provisions in international treaties (TRIPS and NAFTA) that allow the licensee’s use to be considered to have been made by the owner, even if the exploitation agreement is not recorded.

That is as long as it can be proved that the owner had full control over the use by the third party via corporate ownership or distribution/resale agreement. The enforcement of the provisions of the international IP treaties has been affirmed by the Mexican courts.

"When a corporate change in the ownership of a trademark, patent or design is not recorded before the IMPI, some legal consequences can arise."

Finally, if the address of an IP owner changes and the change is not recorded before the IMPI, the service of notice of any related official communication or proceeding will be considered as being legally made at the recorded domicile.

It is not mandatory to record any other biographical data. However, IP firms should always suggest keeping the rights owner’s information updated in order to prevent groundless proceedings or objections against it.

In conclusion, it is always advisable to keep an updated record of ownership information and any corporate changes regarding IP rights, whether in Mexico or any other country, in order to safely maintain your trademarks, patents or designs.  

Emilio Albarran is a trademark attorney at Becerril, Coca & Becerril. He can be contacted at: ealbarran@bcb.com.mx

Emilio Albarran, Becerril, Coca & Becerril, Mexican Institute of Industrial Property, trademark, IP, IMPI, licence, TRIPS, NAFTA,

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