Mexico, as in many other countries does not specifically regulate the use of trademarks on the Internet. Nevertheless, the Mexican Law of Industrial Property (LIP) provides a system primarily based on registration but additionally recognizing use as a source of rights. In this regard, use of trademarks in commerce shall accrue rights, but the right to the exclusive use is obtained through the registration.
In accordance to the practices and customs there is a traditional concept of use in Mexico establishing that commercial transactions regarding the goods or services covered by a trademark must be conducted in order to trigger use. These transactions are usually reflected in invoices. However, it is questionable if under the scope of the traditional concept of use the use of a mark would be accepted if not necessarily applied onto goods or services themselves, but instead used in connection with material such as publicity, price lists, advertising by any means and in general any oral or written reference of the mark in publications, newspapers, radio, television and Internet, among others.
Notwithstanding the foregoing, Regulations to the LIP also considers that a trademark is used whenever goods and/or services are available for the consumer public in Mexican commerce. It is understood that the products and/or services will be "in commerce" when they are commercialized using adequate means and in quantities fulfilling the practices and customs that are followed in each particular industrial or commercial sector. Lastly, it is considered that a mark is used when it is applied to products that are destined to exportation.
There is a Court resolution which has established that use requirements will suffice if products are available in commerce understanding that products will be in commerce when manufactured or produced in Mexico or at least when they are on sale or resale.
In light of the above, if a trademark is only advertised in a website, use will not be triggered in accordance with the LIP. Likewise, it is our opinion that trademark usage will be triggered if a Mexican Internet user purchase a product identified under a trademark appearing in a website provided that said product comes from the Mexican Republic. However, use of a trademark in Mexico would be questionable if the Mexican Internet user acquires a good identified under a trademark from a country other than Mexico. This latter use hopefully will be clarified once the courts establish precedents or until there is a specific provision in Mexico.
By Francisco Capetillo-Traeger
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.