July 23, 2007

IP Notes

Exclusivity of the use of marks and parallel importations. While the purpose of registering a mark is to make effective the exclusive right to use
such, in accordance with the Industrial Property Law, there exist exceptions that allow for the use of registered marks by third parties. One of
these exceptions is known as parallel importations, which consists of allowing the use of a registered mark by a third party that uses, sells,
distributes, etc., as long as the introduction of the mark into commerce has been done legally by the owner of the registration or one who has a
recognized license for such. In these cases, the product that has the mark must be legitimate, and the third party, without being the owner of the
mark, must have the right to use such. The requirements for such purposes are: (i) that the introduction of the product into Mexico commerce is
carried out by the person in the foreign country that is the owner or licensee of the registered mark; and (ii) that the holder of the registered mark
in Mexico and in the foreign country be, on the date of importation of the product, the same person or members of the same economic group or
be licensees or sub-licensees. The regulations to the Law indicate when two different parties are considered as part of the same economic group.
Given the growing international trade of products covered by marks, there is a natural increase in parallel importations cases.


Issue 43–July 2007