Mexico: Litigating for reliable criteria

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: Litigating for reliable criteria

When talking about reserva rights – a legal institution exclusive to the Mexican legal system, which protects a variety of assets, such as titles of publications or broadcasts, among others– there is a problem that stands out: an absence of certainty regarding the criteria used by the authority (the Mexican Copyright Office, or INDAUTOR) when examining applications.

Indeed, INDAUTOR's criteria tend to vary on a case-by-case basis, partially because reserva-related litigation is uncommon. This, in turn, leads to an absence of judicial precedents that could be used as guidelines by the authority.

For comparison, the authority responsible for trade mark rights (the Mexican Industrial Property Institute, or IMPI) usually applies well-established criteria, largely based on judicial precedents, as trade mark-related litigations are the bulk of IP contentious proceedings in Mexico.

As an example, recently a federal court overturned an INDAUTOR ruling which had denied protection for a magazine title. The proposed title comprised the name of a fictional character, but the protection was denied because it was considered that, potentially, the title could be also the "name of a person".

In this case, the court reasoned that while the law prohibits granting reservas for "names of persons used in isolation", such prohibition should be understood in connection with "existing individuals", and was not applicable for titles that could be the name of a person whose existence was not demonstrated.

This ruling hardly seems ground-breaking, since IMPI has applied the same criterion for years, in connection with a similar prohibition for trademark registrations. However, it was the first ruling of its kind regarding reservas.

Cases like this exemplify why reserva-related litigation should be encouraged, since the existence of judicial precedents would allow future titleholders to have certainty over the criteria that will be applied by the authority in each case.

martinez.jpg

Adrián Martínez


OlivaresPedro Luis Ogazón No 17Col San Angel01000 México DFTel: +5255 53 22 30 00Fax: +5255 53 22 30 01olivlaw@olivares.com.mxwww.olivares.com.mx

more from across site and SHARED ros bottom lb

More from across our site

Paul Hastings and Smart & Biggar also won multiple awards, while Baker McKenzie picked up a significant prize
Burford Capital study finds that in-house lawyers have become more likely to monetise patents, but that their IP portfolios are still underutilised
Robert Reading and Faidon Zisis at Clarivate unpick some of the data surrounding music-related trademarks
China's latest IP litigation statistics and a high-profile hire by O'Melveny were also among the top talking points this week
David Aylen, who spent more than 20 years at Gowling WLG, has joined United Trademark and Patent Services as of counsel in the UAE
Europe is among the most lucrative legal markets for PE firms to bet on, but clients’ reactions will decide whether external investment drives success
Rulings of note covered pre-June 2023 infringements and jurisdiction over non-UPC states, while winners of Managing IP’s EMEA Awards acted in multiple cases
Jason Blair, a former special marks examiner, said Dykema’s Texas presence will help him build deeper connections with clients
Lee Curtis and Rachel Platts at HGF discuss the rise of the ‘intention economy’ and its impact on trademark law
Martin Wintermeier discusses taking a hit for clients, not letting stress get to you, and why being a criminal defence lawyer might have been fun
Gift this article