Many of our clients have inquired us regarding license agreements and specifically if it is compulsory to record them at the Patent and Trademark Office.
The straight response to this question is that Trademark and Patent owners are under no obligation to record their license agreements in Mexico. Nevertheless, it is absolutely necessary to bear in mind certain considerations:
Firstly, an owner of a Trademark Registration is required by the law to use the Trademark in connection with the products for which it was registered. If the owner is not using the trademark, then the Registration may be subject to cancellation on the basis of non use. However, the law recognizes the use by a user or licensee if the agreement is registered; otherwise such use will not be accepted.
Secondly, the user or licensee of an agreement may be entitled to follow the necessary actions to defend the Trademark, Patent (or any IP right) against a non authorized use, only if the agreement is registered and if the same authorizes the user or licensee to do so.
As examples of the above, we must mention that usually, for corporate reasons, Trademarks are not used directly by the owner. Instead, the trademarks are used by one of the other companies within the corporate framework. In this particular case, although the owner and the user have all the necessary documents to prove the relationship between them, the use conducted by the other company will not benefit in any way the owner of the Registration since the agreement has not been registered.
If a non use cancellation action is filed against a Trademark Registration in such conditions and, if the owner does not have sufficient evidence to prove that he is using it, then the Registration will be cancelled.
In this latter example, after having recorded the agreement, it is possible to file infringement actions in the name of the licensee or user. This is important because in some cases, according to the time available, it is simpler and faster to obtain a power of attorney from a licensee, particularly, when this is a Mexican company or person, than from the owner.
"The content of this article is intended only to provide general guidelines related to this particular matter. For your specific circumstances, full specialist advise is recommended"