Representing defendant we produced counterarguments and evidence demonstrating: i)Lack of Ownership of the convenience store located in Puerto Rico, where complainant found the advertising materials featuring his trademark, name and image; ii) that the defendant had fully respected the termination of the licensing agreement with complainant and had appropriately instructed the party responsible for marketing the products in Puerto Rico to retrieve any advertising materials featuring Camil's name and image; iii) that defendant’s current products, including those marketed in Puerto Rico, did not bear complainant's name and image.

Despite the defendant's arguments, both the Mexican Trademark Office (IMPI) and the Appeal Court (FCAA) ruled in favor of Complainant, sustaining that while the infringing advertising materials were found in Puerto Rico, they were produced based on a license agreement executed in Mexico, and with a licensee based in Mexico. This "point of contact" with Mexico supposedly provided the basis for the Mexican authorities to assert jurisdiction over the case. However, during the Amparo stage, the case underwent intense debate and analysis, and our law firm successfully persuaded the Federal Circuit Courts that the Mexican PTO lacked the authority to make an extraterritorial application of the Law of Industrial Property. We were able to establish, among others, that although the license agreement had been executed in Mexico, and although defendant was based in Mexico as well, the alleged trademark and copyright infringements occurred outside of Mexico's jurisdiction, and therefore, the alleged point of contact was not good enough for IMPI to make an extraterritorial application of the law. In the end, the Federal Circuit Courts ruled in favor of the defendant, denying any trademark and copyright infringements against them. The courts acknowledged the lack of extraterritorial application of Mexican trademark law, emphasizing that as a rule, for a trademark infringement to be actionable, it must occur within Mexican territory.

Conclusion: In light of the U.S. Supreme Court's decision and the Mexican regulation on trademark use, it becomes evident that both jurisdictions adhere to a consistent and sensible approach. Trademark use and infringement claims must be firmly tied to the respective countries' borders for their trademark laws to be applicable. These cases also shed light on the complexities of trademark infringement cases with international elements. As businesses continue to operate globally, this harmonious alignment emphasizes the significance of respecting territorial boundaries when enforcing trademark rights in the United States and Mexico. Understanding these jurisdictional principles, as well as counting on the proper local legal counseling is paramount in safeguarding trademarks and maintaining legal compliance in both countries, specially considering that the recent evolution of Mexican trademark Law now allows for directly claiming damages derived from IP violations, either before civil courts or with the Mexican Trademark Office itself. At OLIVARES we can assist you with any queries or legal assistance you may need in connection with specialized trademark litigation.hover: