The Ley Federal de Protección a la Propiedad Industrial (LFPPI, Federal Industrial Property Protection Law) defines a trademark as any sign perceivable by the senses and capable of being represented in a manner that allows clear and precise identification of the subject matter of the protection, distinguishing goods or services of the same class in the market.
Trademarks eligible for protection in Mexico may consist of: (i) names, letters, numbers, figurative elements, color combinations, and holograms; (ii) three-dimensional shapes; (iii) trade names and corporate names; (iv) the name of a natural person, provided it is not confused with a registered trademark or published trade name; (v) sounds; (vi) smells; and (vii) combinations of operational or image elements —size, design, color, form arrangement, labeling, packaging, decoration— that, together, distinguish goods or services in the market.
Trademark registrations are valid for ten years from the date of grant and may be renewed for equal periods. Registration is processed before the Instituto Mexicano de la Propiedad Industrial (IMPI, Mexican Industrial Property Institute).
There is widespread unawareness about the limitations and effects of trademark registration in Mexico. Below we review the principles that frame its scope:
a) Territoriality principle
As a general rule, trademark registrations are effective —providing protection and exclusivity to the holder— only in the territory of the country where they were granted. This principle is embedded in both domestic and international frameworks, and has been reinforced by isolated thesis with digital registry number 2019974: “trademark protection is limited to the borders of the country where it was registered; exclusivity of use may be enforced only within that territory”.
An exception applies to well-known trademarks. Under international conventions —particularly Articles 6 bis and 10 bis of the Paris Convention and Article 16 of the TRIPS Agreement— member states must refuse or cancel the registration and prohibit the use of a mark likely to cause confusion with another that is well known in a member country, even if not locally registered.
b) Specialty principle
This principle limits the right conferred by the registration, in relation to the nature of the goods. The registration is effective only in the field of identical or similar goods or services; the applicant must expressly identify the goods or services covered. The exclusivity right is thus bounded to those goods or services for which the distinctive sign was specifically claimed.
c) Duration principle
As mentioned, trademark registrations are valid for ten years, renewable. Mere registration is not enough to maintain ownership: actual and effective use and exploitation of the sign must also exist. Thesis 2023270 states that “both domestic and international provisions require proof of actual and effective use of a trademark through continuous and unequivocal acts, in order to prevent sham exercise of trademark rights and suppress practices that unjustifiably restrict trade”.
These limitations aim to prevent the unjustified removal of distinctive signs from commerce. Despite them, the trademark holder retains the ability to file infringement actions against unauthorized users, which reinforces the importance of a properly consolidated IP portfolio before engaging in commercial activity.