The TFJA rules on the powers of the SHCP in trademark matters

By Mike Margáin and Georgina García

By means of a ruling issued on January 31, 2024, the Federal Court of Tax and Administrative Justice (TFJA) declared the nullity of a resolution issued by the Ministry of Finance and Public Credit (SHCP) related to the use of trademarks in Mexico, as follows.

• Previously, the SHCP prohibited a company from using the word “Financiera” in its corporate name, trademark, logo, web page, advertising and mailings, among others, since it considered that the use of the word expresses ideas similar to those protected by article 105 of the Law of Credit Institutions and therefore its use should be reserved to such institutions.
• However, given that the laws that regulate trademarks in Mexico are the Federal Law for the Protection of Industrial Property and the corresponding Regulations, and that the SHCP did not indicate the grounds on which it was competent in such matter, ECIJA Mexico, on instructions of the client, filed a nullity action against the resolution in question.
• Following the trial, the TFJA considered and resolved that the SHCP:
  •  Did not substantiate in an exhaustive manner its competence, and therefore it must issue a new resolution.
  •  It must point out that the scope of the prohibition of the use of the word “Financiera” corresponds only to  the corporate name.
  •  It must refrain from prohibiting the use of the word “Financiera” in trademarks, logos, web pages, advertising and mailings, for exceeding the scope of its powers.

The foregoing constitutes a relevant precedent since it prevents the improper exercise of powers by authorities other than IMPI in trademark matters.

——

IP & TMT Area of ECIJA Mexico

socios.mexico@ecija.com

+52 55 5662 6840

www.ecija.com