I was a guest on the podcast Blindando tu Creatividad, from UCompensar Estereo, hosted by Diego Díaz. We talked about something I see constantly in practice: how to take a business into another country without losing it along the way.
Here is the essence of that conversation.
The rookie mistake, and the most expensive one
Exporting first and registering afterwards.
A trademark is territorial: a registration with IMPI protects you in Mexico and nowhere else. It has no effect in the United States, Spain or Colombia.
And in most countries the right arises from registration, not from use. So a Mexican brand impeccably protected here can find that, in the country it wants to enter, a registration already exists in somebody else’s name.
The worst that can happen
That the registration belongs to your own distributor.
It is more common than it sounds: a company enters a new market alongside a local partner, and that partner registers the trademark in their own name to speed up paperwork. While the relationship works, nobody notices. When it breaks, the manufacturer discovers it cannot sell under its own name in that country.
Recovering it means litigating abroad, with local counsel and an uncertain outcome. Preventing it takes two lines in the contract.
The tools that do exist
- Madrid Protocol. Mexico is a member. One international application, based on the Mexican registration, designating several countries at once.
- Right of priority. The Paris Convention gives six months from the first application to file in other countries keeping that original date. For patents, twelve.
- A search in the destination country. Before shipping, not after.
- A contractual clause expressly prohibiting distributors and licensees from registering the trademark in their own name.
The correct order
- Register in Mexico, in the company’s name.
- Define the target markets.
- Run clearance searches in each.
- File before exporting, using priority where the deadline allows.
- Protect the contracts with local partners.
Crossing the border is a commercial decision. Crossing it protected is a decision taken a few months earlier.
If you are thinking of expanding outside Mexico, write to us: we will review at no cost how your trademark stands and what would be needed.