November 17, 2008

Cancellation of Trademark


In previous publications, we have informed our readers that a registered trademark in Mexico may lose its validity based on nullity or expiration
procedures, and other causes listed in the law. In addition to losing a trademark registration based on nullity and expiration, a trademark owner may lose
rights if the mark is “cancelled” in accordance with Mexican intellectual property law. Article 153 of the Intellectual Property Law (Ley de la Propiedad
Industrial) provides that “A trademark registration will be cancelled if its owner has caused or tolerated the mark to become transformed into a generic
name corresponding to one or other product or services covered by its registration, so that, in the commercial and generalized public usage of the mark,
the mark loses its distinctive character and is no longer a means of distinguishing the product or service to which it applies.” In the marketplace, various
trademarks exist which, because of the form in which they were disseminated by their owners, continue to be confused with the technical name that must
be applied to their product, and in this manner cause the mark to be converted into a generic name, thus leading to its cancellation. For this reason, it is
almost always advisable for a trademark owner to designate its mark with the proper registration sign “®”, and at the same time, disseminate in a distinct
manner the technical name of the product in question. In this way, a trademark owner can avoid having its trademark converted into a generic term,
unless it can be shown that the trademark owner “deliberately” allowed the mark to be converted to generic use.


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Issue 59–November 2008