Coexistence Agreements: Commerce, confusion and consent
Consent and coexistence agreements have been a common, while non-binding, practice in Mexico. With the 2018 amendments to the Mexican Industrial Property Law, such agreements are now supposed to be binding as an alternative to overcome an objection upon the existence of a prior application or registration.
The question remains as to what is the Mexican Trademarks Office’s (IMPI’s) obligation for protecting general consumers from the risk of confusion, even when the involved marks’ owners may consider there is no confusion or even when they allow the dilution for commercial or other reasons.
According to Mexican law, as in many other countries, there is a catalogue of situations in which registration of a trademark is not possible. Those prohibitions for registration should not be subject to interpretation and should be applied only if all requirements and specifications are met. However, the 2018 amendment established an exception regarding confusingly similar trademarks, allowing express written agreements between owners.
In spite of the amendment, there are certain aspects that have to be analysed to determine to what extent private agreements should be mandatory and accepted by the Mexican authorities.
The will of involved parties
An agreement between parties is ruled primarily by the intent of such parties on the terms and conditions they agree to be obliged to for that purpose.
Therefore, if the owner of a prior registration or application wishes to grant a consent or execute a coexistence agreement with an applicant, they may do so and on the terms they determine, even if it entails a limitation of their own rights.
Nonetheless, regarding trademarks, which constitute the exclusive right to exploit a determinate distinctive sign granted by the government, there are some factors that have to be accounted for in this equation, namely, consumers.
