The intellectual property protection is one of the subjects of more relevance for the operations of a company. With regard to trademarks, they constitute the commercial image with which a company presents itself to the public consumer, which distinguishes and gives it identity in the products and services that are offered. Below, we offer you a brief summary of some of the most relevant aspects that must be considered in trademark matters, in order to assure an adequate protection and defense of these rights.
- Adequate identification and protection of products and services: An adequate analysis of the operations that the company carries out is of significant importance. A correct legal advice in trademark matters must take into consideration not only the most imminent or direct activities that are currently being performed, but also all the other products and/or services that are related directly or indirectly, and that as result, may affect the intellectual property rights of the company. For instance, it is very common in our experience, that a company has protected footwear, but not the services of commercialization of footwear; or even worse, that a third party without right, has registered a trademark, identical or confusingly similar to the one that protects footwear, but for the service of commercialization of footwear, arising this way an IP contingency, that could have been prevented with a broad and complete protection.
- International protection: Likewise, if the company carries out activities in different countries or if it plans to do so, it is necessary to take all the necessary steps for protecting its interests. Usually, the most recommended is that, regardless if the company plans to incorporate a subsidiary in some country or if the investments plans in same in any other manner are medium or long term, the trademark registry procedures be carried out as soon as possible. This, with the purpose of preventing that a third party anticipates in the registration of the same trademarks, avoiding unnecessary lawsuits and/or negotiations.
- Importation: When the goods are imported from another country, it is firstly necessary to obtain the registry of the trademark in the importer country, and almost simultaneously, to have a trademark license agreement executed between the holder of the trademark of the goods, and the person that will carry out the sell and distribution of such goods. This is very recommended for counting on with an effective use of the trademark in Mexico; however, for this, such license agreement must be also registered before the intellectual property authorities, in order that same has legal effects against third parties, and the legal importation and distribution of the goods be assured.
- Use and expiration: After obtaining the registry of a trademark, it is important to keep all the necessary documents and information for certifying the due use of it. These documents must authentically evidence (on circumstances of manner, time and place) that the trademark has been used on the products and/or services that such trademark covers. Otherwise, the holder of the trademark could run the risk that a third party (for being affected for such trademark) decided to suit the expiration of the trademark for lack of use. With the purpose of reviewing the existence of all these elements, it is highly recommended to perform periodic internal audits, to the documents that support the use of the registered trademark, avoiding this way to lose the IP rights.
- Corporate name: Due to using without consent a registered trademark or one confusingly similar as part of a corporate name constitutes an administrative infringement, it is very relevant to carry out the appropriate researches of trademark’s registries and applications, and then proceed with the registration of the trademarks, so as to prevent any controversy with third parties and be able to use the trademark in the corporate name.
- Revision of the IP Gazette: Carrying out a periodic revisions to the IP Gazette published by the Mexican Institute of Industrial Property is very important, due to this allows to identify marks in process of registration or already registered, that for their phonetic, graphic or conceptual composition, could invade the IP rights of the company; being able as result, to start the correspondent legal actions, within the legal terms.
We trust that this information is useful for you. In case you need any additional information on the foregoing, please do not hesitate to contact our attorneys: Andrés Gómez agomez@cuestacampos.com or Rafael Sánchez rsanchez@cuestacampos.com.
The above is provided as general information prepared by professionals with regard to the subject matter. This document only refers to the applicable law in Mexico. While every effort has been made to ensure accuracy no responsibility can be accepted for errors or omissions. The information contained herein should not be relied on as legal, accounting or professional advice being rendered.
