Assignment valid without Institute of Industrial Property approval

Mexico

The First Circuit's Fifth Tribunal for Administrative Matters has issued a resolution (Resolution 685/2000) rejecting the traditional interpretation of Article 143 of the Industrial Property Law, which relates to the registration of agreements to assign trademark rights. The tribunal stated that Article 143 allows an assignee to enforce its rights against third parties, even if the Mexican Institute of Industrial Property (IIP) has not issued an official approval of the assignment.

The tribunal was required to determine at what moment an agreement to assign trademark rights becomes effective. It analyzed Article 143 of the Industrial Property Law and previous interpretations set out in case law. The tribunal noted that these cases seemed to suggest that the assignment of trademark rights should only be considered effective, and thereby enforceable against third parties, after the registrar at the IIP has registered the agreement and issued an official communication approving the assignment.

The tribunal rejected this approach stating that Article 143 allows an assignee to enforce its rights against third parties, even if the registrar has not issued an official approval. It held that an assignee becomes the owner of the trademark and may exercise its rights against third parties, if the registration of the agreement was requested in a timely manner. The reasoning behind the tribunal's order is that the registrar's omission to issue an official communication that determines if the assignment agreement may, or may not, be registered does not alter the fact that the trademark has a new owner.

Karl Tessmann, Arochi Marroquín & Lindner, Mexico City

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