North America

With many blocks on .xxx domain names expiring next year, brand owners should consider using new tools to prevent their trademarks being available to third parties

Unfortunately, Mexico remains on the Watch List of the Annual Special 301 Report on Intellectual Property Protection and Review of Notorious Markets for Counterfeiting and Piracy compiled by the Office of the United States Trade Representative (USTR). In this document, the United States government reviews and evaluates the protection actions that governments have taken to fight against counterfeits and piracy. The document concluded that the Mexican government has so far not adequately implemented the necessary actions for the protection of intellectual property rights.

Brand owners assess the reputational damage if their marks are used by third parties on pornographic websites and mull the best strategy for combating infringement

Eduardo Kleinberg and Santiago Zubikarai of Basham evaluate the new industrial property legislation under consideration in Mexico, assessing changes to the law on damages, fines, the registration of trademarks and patents

A problem that impacts day to day in our country, and specifically the owners of trademarks, is the deficient or lack of regulation in our legislation regarding what is and what should be understood by "use of a trademark", "use of a trademark in accordance with the customs and habits" and "effective use v token use".

In Fifth Generation Inc. v Titomirov Vodka LLC, the Trademark Trial and Appeal Board (TTAB) issued a precedential ruling, granting Fifth Generation's motion for summary judgment as a sanction in view of Titomirov Vodka's failure to comply with the TTAB's orders, as well as its pattern and practice of avoiding its discovery obligations.