MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
three grounds set forth in the FLPIP under which a trade mark registration shall not be enforceable: • prior use of an identical or confusingly similar trade mark in good faith; • exhaustion of trade mark rights; and • lawful use of an individual’s or corporation’s name. Additionally, as part of their defence strategy, defend - ants may file counterclaims. There is no formal catalogue of defences for trade mark infringement actions. However, defendants may rely on any defence that fits the case strategy. These must be substantiated with evidence beyond a reasonable doubt to be effective. If proven, these defences can constitute total bars to liability. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The fair use doctrine allows the use of copyrighted works without the owner’s consent under certain cir - cumstances; however, this doctrine is not applicable to trade marks. This doctrine must be analysed within the framework of the Berne Convention, which establishes that fair use is only applicable in specific scenarios where it does not harm the rights of the author, economic hold - ers, or the work itself, and does not interfere with its normal exploitation. The FCL provides a list of limi - tations under which copyright use may not consti - tute infringement. Therefore, when invoking fair use in Mexico, both the Berne Convention and the FCL must be carefully analysed to determine whether the specific case qualifies. There are no exceptions to copyright infringement based on satire or parody. In a notable precedent, the Supreme Court of Justice (SCJ) ruled that parody could not be considered an exception to copyright infringement, even under the principle of freedom of speech. The SCJ determined that authorisation from the copyright owner was required to create and dis - tribute a parody, and failure to obtain such authorisa - tion constitutes infringement.
Mexico does, however, recognise the right to free speech or information as an exception to copyright infringement. For this exception to apply, the same factors as those outlined under the fair use doctrine must be met. These include ensuring that the use does not harm the rights of the owner or the normal exploi - tation of the work. A thorough analysis is required to determine whether the specific case qualifies under this exception. In the case of registered trade marks, Mexico has recognised the right to use a trade mark to compare products or services with the purpose of informing the public, provided that such comparison is not mislead - ing, false, or exaggerated according to the terms of the Federal Consumer Protection Law. 9.3 Exhaustion For registered trade marks, the FLPIP establishes that a registration shall not produce any effects against any person who markets, distributes, acquires, or uses the product to which the registered trade mark applies, after the product has been lawfully introduced into commerce. Even though in there is a type of exhaustion of copy - right rights based on the doctrine of first sale, it is subject to limitations that must be carefully consid - ered to avoid engaging in infringement. This doctrine grants the buyer complete ownership of the specific product that has been acquired, and that is protected under a copyright, such as a book. However, while the owner is permitted to alter the item for personal use, actions such as reprinting for resale, or any other activities that harm the intellectual property holder’s rights are prohibited. Regarding digital content, the exhaustion doctrine is more limited due to licensing agreements and the use of blockchain, which often prevent the transfer or resale of digital copies.
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