September 11, 2013

Recommendations for the Use and Preservation of Registered Trademarks

By Antonio Campero

In Mexico, as in the rest of the world, trademarks that are duly registered may be enforced against third parties who attempt to utilize or copy them. Nonetheless, it is advisable to take certain measures with respect to their use and proper maintenance, including the following recommendations:

  • Ensure that the marks are always used in the manner in which they were registered. Many times the design of a trademark evolves over time, which means that while the mark continues to maintain similar elements, it has been modernized in such a manner that it can no longer be considered the same trademark that was previously registered. In this case, the rights pertaining to such trademark may be lost for failure to use the mark in the manner in which it was registered. In any event, it is advisable to verify any changes from time to time in order to make decisions regarding the same or to register the new image of the mark.
  • The ® symbol is universally known and accepted to indicate that a trademark is registered. Although some designers may not like the presence of this symbol on the image of the mark, it is very convenient to accompany the mark with such symbol to give third parties notice as to the exclusivity of such mark. Similarly, it is highly recommended that the mark occupy a central space (noticeable) on the labels, packaging or printings of products that display the mark.
  • Naturally, with the passage of time, trademarks gain notoriety through their use in commerce, and, in some cases, such notoriety reaches a level where the name of the mark is used as if it were a “generic” term to identify similar products (even competitors’ products are called by the same name). Mexican legislation provides that when a trademark is used as a generic term and its owner “provoked or tolerated” such, then the trademark can be cancelled. Therefore, it is necessary to always include the ® symbol, since it openly demonstrates the exclusivity of the name and makes the generic name of the product known to the public. Unquestionably, in the event third parties imitate or copy the mark, the owner should take necessary actions to avoid creating an impression that the owner tolerated the conversion of the mark to a generic term.
  • Always maintain adequate controls with respect to the validity of trademarks. In most cases, external agents are in charge of such tasks; therefore, it is prudent to ensure the avoidance of errors by such agents that may result in the loss of trademark rights for failing to renew such.
  • Finally, some companies have adopted a policy by means of which certain products and services that enter commerce immediately after their creation are sold using “stand-by” trademarks, which have previously been filed and are available for immediate use as necessary, even though the products such “stand by” marks cover have not been in the stream of commerce. This strategy can be costly but, at certain circumstances, may allow companies to bring products to the market ahead of their competitors.