MEXICO Law and Practice Contributed by: Luis Álvarez Cervantes, Adolfo Athié Cervantes, Alejandro Barrera, Jesús Colunga, Eduardo Kleinberg, Juan José López de Silanes, Carlos Martínez-Betanzos and Amílcar Peredo, Basham, Ringe y Correa S.C.
Use Once a trade mark is registered, the owner has a duty to use it in Mexico. Unlike other jurisdictions, use is not necessary to obtain the registration, only to main - tain it. Upon the third year of the registration of the trade mark, a period of three months will run in which the owner of the registration must submit a statement under oath listing the specific products or services in which the trade mark is used. The coverage of prod - ucts or services covered by the trade mark registration will be limited to only those for which use is timely declared. If no use is declared at all, the registration will be lost. In addition, use needs to be declared with every renewal. Use means that the products or services identified by the trade mark must be available to consumers in Mexico. Term A trade mark registration will last ten years from its grant. It can be renewed for identical periods of time, provided that the owner files the renewal forms in time and declares under oath that the trade mark is in use. Assignments and Licences A trade mark registration may be assigned. However, it is necessary to record the assignment with the IMPI in order for the new owner to be able to act against The owner of a registered trade mark has a right of exclusive use over it. The unauthorised use of identi - cal or confusingly similar trade marks for identical or similar goods and services constitutes infringement and allows the owner of the registration to initiate a proceeding before the IMPI to have the infringer pun - ished with a substantial fine. In addition, preliminary injunctions can be sought to halt the alleged infringing conduct. The injunctions can become permanent in the final decision of the case. third parties. Enforcement
Bayer case handled by the authors’ firm, and is in full force and effect for all patents filed before 1 July 2020. Rights The patent holder has the right to an injunction and may claim damages from third parties even if the ille - gitimate use of their patent was made before grant - ing, provided that the application had already been A rights-holder may claim damages through two dif - ferent procedures: directly before the judiciary (either federal or state), by means of a civil or commercial action and without the need to obtain a definite infringement ruling to make the claim, or through IMPI, through a motion. published. Damages If a counterclaim for the annulment of the respective patent, registration or publication is filed, the court shall suspend the procedure until the respective judg - ment is entered. To warrant the damages before the judiciary or IMPI, it is necessary to demonstrate wrongful conduct, the harm caused and a direct causal relationship between the two. 7.2 Trade Marks Trade marks are defined in Mexican law as any signs perceptible through the senses, susceptible of being represented so as to determine the object of protec - tion and identify products or services. This includes letters and numbers, designs, three-dimensional shapes, sounds, scents, trade dress and combina - tions thereof. Registration Process To obtain a right of exclusive use over a trade mark, it is necessary to register it before the IMPI by sub - mitting an application form and making a payment of government fees. The IMPI will take approximately ten days to publish the trade mark application in the Industrial Property Gazette. This will start a period of one month for any third party to oppose the applica - tion. With opposition or without it, the examiner of the Mexican Trade Mark Office will take approximately four to six months to conduct an examination.
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