If the owner of a trademark, patent or design fails to notify the Mexican Institute of Industrial Property (IMPI) of a corporate change, legal consequences can arise.
The most common corporate changes regarding IP matters are:
- changes in IP ownership (eg, assignments or transfers of rights or mergers);
- changes in IP exploitation status (eg, with regard to licensing agreements or security interests); and
- changes in IP owner information (eg, with regard to the rights holder's name, address or legal status).
If the owner of a trademark, patent or design fails to notify the IMPI of a change of ownership, the new owner's right to defend its IP rights will be affected. If the new IP owner needs to enforce or defend its rights, it will have to record the change with the IMPI (which takes approximately one to three months) before it can take legal action. The ownership of the mark, patent or design will not be updated until the corporate change has been notified, and the new owner will receive no official communications from the IMPI during this time.
If the owner of a mark, patent or design fails to notify the IMPI of a licensing agreement or security interest or a cancellation of either, the agreement will be valid between both parties, but will have no effect on third parties.
If national legislation provides that a licensee's use of a trademark will benefit the owner only if the IMPI is notified of the agreement, provisions in international treaties (ie, the Agreement on Trade-Related Aspects of IP Rights and the North American Free Trade Agreement) allow the licensee's use to be considered to have been made by the owner, even if the exploitation agreement is not recorded. However, this applies only if it can be proved that the owner had full control over the third-party use via corporate ownership or a distribution or resale agreement. The enforcement of the provisions of the international IP treaties has been affirmed by the Mexican courts.
Finally, if an IP owner's address changes and the IMPI is not notified of the change, the service of notice of any related official communication or proceeding will be considered as having been legally made at the recorded domicile. While it is not mandatory to record any other biographical data, rights owners should ensure that they keep their information updated to prevent groundless proceedings or objections against them.
Parties should keep an updated record of ownership information and corporate changes regarding IP rights in order to maintain their trademarks, patents and designs safely.
For further information on this topic please contact Emilio Albarran at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.
This update was edited from an article originally published in World Intellectual Property Review.