By: Ana Esther Urquizo
The Federal Law for the Protection of Industrial Property (LFPPI) in Mexico aims, among other things, to protect industrial property through the regulation and granting of invention patents; registrations of utility models, industrial designs, layout designs of integrated circuits, trademarks and commercial slogans; publication of trade names; and declarations of protection for appellations of origin and geographical indications (Article 2, Section I). Likewise, it seeks to prevent acts that infringe industrial property rights or constitute unfair competition related thereto, and to establish the sanctions and penalties applicable to such acts (Article 2, Section III).
Article 171 of the LFPPI defines a trademark as “any sign perceptible by the senses and capable of being represented in a manner that allows the clear and precise determination of the object of protection, which distinguishes products or services from others of the same kind or class in the market.” For its part, Article 173 (Section XVIII) establishes that the following shall not be registrable as trademarks:
- Signs that are identical or confusingly similar to a previously filed or registered and valid trademark, when applied to the same or similar products or services.
- Signs identical to a registered trademark or one pending registration owned by the same holder, intended to distinguish identical products or services.
From these provisions, it follows that the law seeks to protect trademark identity by ensuring that holders have exclusive rights to their use in connection with the products or services they distinguish, and to prevent new applications from generating consumer confusion. Likewise, mechanisms exist to resolve conflicts, avoid duplications, and prevent the improper use of distinctive signs, contributing to an environment of fair competition in which companies and individuals can coexist without adversely affecting one another.
Nevertheless, the law also provides an exception through formal consent between trademark holders. That is, trademarks that are confusingly similar or even identical for similar products or services may be registered provided there is express written consent.
This allows potentially conflicting trademarks to legally coexist, thereby facilitating negotiation and private agreements that, in certain cases, make trademark coexistence viable.
However, under the aforementioned provisions and in order to safeguard consumer protection, the Mexican Institute of Industrial Property will not process agreements entered into by applicants where the trademarks are identical or similar and intended to protect identical products or services.
Consequently, elements such as the wording, design, and colors are essential to creating a unique, recognizable, and distinguishable identity within the same class or category of products or services. This differentiation is typically complemented by an effective communication strategy and a clear understanding of market needs, aimed at offering value propositions that make a trademark memorable and preferred by consumers. In this way, different brands may operate within the same sector, reinforcing their identity without causing confusion or legal conflicts.
For further clarification and by way of example, judicial precedents with digital registry numbers 2030756 [1] , 2004936 [2] , and 161274 [3] establish that: i) there can be no monopoly over generic terms and peaceful coexistence must be allowed when sufficient distinguishing elements exist; ii) trademarks with lower distinctiveness (suggestive or evocative marks) must tolerate the coexistence of similar signs; and iii) similar or even identical trademarks may coexist when the products or services are different and do not create confusion.
The coexistence of trademarks in a competitive market therefore requires a balance between competition and strategic differentiation. The LFPPI provides a framework that promotes such coexistence, fosters innovation, and strengthens fair competition. For companies and individuals, understanding and applying these principles is essential to building strong, recognizable, and respected trademarks within their respective sectors.
1 TRADEMARKS CONTAINING GENERIC OR COMMONLY USED TERMS: CRITERIA FOR DETERMINING LIKELIHOOD OF CONFUSION
https://sjf2.scjn.gob.mx/detalle/tesis/2030756
2 TRADEMARKS: THEIR DISTINCTIVENESS MUST BE ASSESSED TO DETERMINE THE EXISTENCE OF LIKELIHOOD OF CONFUSION
https://sjf2.scjn.gob.mx/detalle/tesis/2004936
3 TRADEMARKS: OBJECTIVE FACTORS TO DETERMINE LIKELIHOOD OF CONFUSION BETWEEN A TRADEMARK APPLICATION AND AN EXISTING REGISTRATION
