New criteria for the admissibility of letters of consent established

The Federal Court for Tax and Administrative Affairs has issued an important ruling on the admissibility of letters of consent.

Once a trademark has been registered with the Mexican Trademark Office, the owner may use its trademark rights in any way it sees fit. This includes the right to allow the existence of confusingly similar marks on the market. A letter of consent confirms that the trademark owner does not object to the registration and use of an identical or similar mark by a third party. 
For many years, the office considered that letters of consent were sufficient to overcome an objection to the registration of an identical or similar mark.
However, the office subsequently changed its practice and stopped admitting letters of consent on a general basis. Letters of consent were admitted only where the trademarks were similar, but not identical. Therefore, the office rejected a large number of trademark applications despite the fact that the applicant had submitted a letter of consent from the owner of the earlier mark. The new practice was based on the argument that the coexistence of identical or confusingly similar marks on the market may cause confusion among consumers (for further details please see "New practice on acceptability of letters of consent").
Several parties whose applications had been dismissed on those grounds appealed to the Federal Court for Tax and Administrative Affairs.
Although, at first, the court ruled in favour of the applicants and admitted the letters of consent, in the past year the criteria have become stricter and the number of cases in which letters of consent have been accepted has dropped.
In the most recent decision, the court ruled that letters of consent will be accepted only where:

  • the parties involved are part of the same group or family of companies; and
  • evidence is provided to prove that the parties are related (merely submitting affidavits is insufficient for these purposes).  
Sergio L Olivares Jr, Olivares & Cia, Mexico City

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