MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
for three consecutive years may expose it to cancella- tion for non-use, either wholly or partially. 2.5 Trade Mark Rights and Limitations Registration grants the exclusive right to use the mark in connection with the registered goods or services and to prevent third parties from using identical or confusingly similar signs. Key rights include the ability to initiate infringement actions, the right to oppose conflicting applications and the ability to license or assign the mark. However, these rights are subject to certain limitations and defecses, including the following. • Descriptive use: third parties may use terms that are descriptive or necessary to indicate character- istics of goods or services, provided such use is made in good faith and does not create a likelihood of confusion. This operates as a narrower concept than the “fair use” doctrine found in other jurisdic- tions. • Use of personal or corporate names: Mexican law does not recognise a broad “own-name defence” where such use would conflict with a registered trade mark. The use of a personal or business name may be restricted if it infringes prior trade mark rights or creates confusion in the market- place. • Exhaustion of rights: trade mark rights are exhaust- ed once goods have been lawfully placed on the market by the right holder or with its consent. As a result, parallel imports are generally permitted, provided the products are genuine and have not been materially altered. 2.6 Trade Mark Enforcement and Remedies Trade mark infringement generally consists of the unauthorised use of a mark that is identical or con- fusingly similar to a registered mark in connection with related goods or services. Trade mark dilution refers to the weakening or loss of a brand’s distinctiveness or prestige as a result of improper use.
Trade mark passing off in Mexico is primarily addressed through trade mark infringement actions regulated by the IMPI under the FLPIP. While Mexican law does not explicitly recognise common law “passing off” for unregistered marks, prior good-faith users can challenge similar registered marks or defend against infringement claims. Trade mark disputes are primarily handled by IMPI in administrative proceedings. Appeals may be brought before specialised federal courts. Available remedies include: • injunctions and cessation orders; • administrative fines; • seizure of infringing goods; and • border measures through customs authorities. Criminal actions may also apply in cases involving counterfeiting. Damages are typically pursued in subsequent civil proceedings once infringement has been declared. 3. Copyright 3.1 Legal Framework and Copyrightable Works Mexico is a party to the Berne Convention, and copy- right protection is governed primarily by the Federal Copyright Law, as well as its regulations and applica- ble international treaties. Protection extends to original creations in the literary, artistic, and scientific fields, including literary works, musical works, pictorial and graphic works, audiovis- ual works, software, databases, architectural works, and works of applied art. Applied art is expressly rec- ognised and may be protected under copyright pro- vided it meets the originality threshold. Industrial designs are generally protected under industrial property law rather than copyright; however, in certain cases there may be overlap where a work qualifies as applied art, allowing for dual or alternative protection depending on its characteristics.
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