Trademark Licenses and User Requirements

A recent case in Mexico, Quejoso: Revlon (Suisse) S.A. RA. - 4747/98, Séptimo Tribunal Colegiado en Maateria Administrativa del Primer Circuito, 11 de marzo de 1999, confirms the requirement that use of a licensed trademark by a licensee may benefit a trademark owner only if two basic elements are met:

1. a license agreement must exist, and
2. the license agreement must be filed with the Mexican Trademark Office.

Failure to comply with these requirements in this case resulted in a finding of ?non-use? by the trademark owner, and cancellation of its trademark registration.

Notorious Trademarks

The court in Quejoso: Cerveceria del Pacifico, S.A. de C.V. RA. - 2163/96 Tercer Tribunal Colegiado en Materia Administrativa del Primer Circuito, 11 de noviembre de 1996 ruled that in attempting to establish notoriety for a trademark (i.e., a well-known trademark), it was not sufficient to submit materials attesting to past sales of branded product. According to the court, such figures did not sufficiently establish the reputation of the trademark. The court insisted that it is necessary to establish the knowledge that exists in the relevant business sector through evidence that should not be restricted only to sales figures, but rather as part of a group of evidence that, when taken as a whole, supports the proposition that the mark is notorious.