Protection of domain names in Mexico is a new subject that requires attention. Domain names can serve as an important trademark function as they symbolize the company's goodwill and recognition in the marketplace, therefore a domain name is a rather recently unique tool that helps a company to display information within the worldwide web and send and receive electronic mail.
The ability of domain names to serve as trademarks derives from the fact that they are used for accessing to websites that offer and advertise the sell of products and services. Consequently, if the domain name pertains to someone else distinct from the owner, it would likely represent a source of confusion among internet users over the source of the information located at this address, which would translate into a real damage of the goodwill in that mark.
The Mexican Law of Industrial Property (LIP) does not expressly provides that a valid registered trademark can be used for enforcing non-authorized use of that mark as a domain name. However, the LIP provides this type of solution in case of trade names by stating the following.
Article 91. A registered trademark or a confusingly similar trademark that has been previously registered may not be used nor may it form a part of the trade name, corporate or firm name of an establishment or corporate person, in the following cases:
I. In the case of establishments or corporate persons whose activity is the production, import or marketing of commodities or services equal or similar to those to which the registered trademark is applied, and
II. When there is no written consent of the holder of the trademark registration or of the person empowered to do so.
A violation of this precept will lead to the application of the sanctions referred to in this law, and a judicial claim may be filed to suppress use of the registered trademark or to the trademark confusingly similar to one previously registered, of the trade name, of the respective corporate or firm names and payment of harm and damages.
The provisions hereof will not apply when the trade names, corporate or firm name included the trademark prior to the date of filing or of the first declared use of the registered trademark.
We would mention, however, that the theory deriving from our interpretation of the legal provisions in Mexican Trademark Law as mentioned in preceding paragraphs has not been tested yet at the Mexican Institute of Industrial Property (IMPI) nor at the Courts.
This article is intended to provide a general guide to the subject matter and should NOT be treated as legal advice. Specific legal advice should be sought by you about your particular case and special circumstances.
A Registered Trademark In Mexico Can Be Employed For Enforcing Unauthorized Use
OLIVARES
Contributor
Our mission is to provide innovative solutions and highly specialized legal advice for clients facing the most complicated legal and business challenges in Mexico.
OLIVARES is continuously at the forefront of new practice areas concerning copyright, litigation, regulatory, anti-counterfeiting, plant varieties, domain names, digital rights, and internet-related matters, and the firm has been responsible for precedent-setting decisions in patents, copyrights, and trademarks.
Our firm is committed to developing the strongest group of legal professionals to manage the level of complexity and interdisciplinary orientation that clients require. During the first decade of the 21st century, the team successfully led efforts to reshape IP laws and change regulatory authorizations procedures in Mexico, not only through thought leadership and lobbying efforts, but the firm has also won several landmark and precedent-setting cases at the Mexican Federal and Supreme Courts levels, including in constitutional matters.