JURISDICTION REPORT: MEXICO
WHEN IS A DATE OF FIRST USE NOT A DATE OF FIRST USE?
Carlos Hernández León Becerril, Coca & Becerril, SC
One of the topics discussed by the magistrates of the IP bench of the Federal Court for Tax and Administrative Affairs (FCTAA) in the past two years relates to the decisions issued by the Mexican Institute of Industrial Property (IMPI) in cancellation actions filed against trademark registrations on the basis of
false data. The principal
argument in these actions is the false date of first use declared by the applicant in its trademark application, against the date of first use proved by the trademark holders in this litigation.
In accordance with Mexican IP law and regulations, the applicant in a trademark application must indicate the date of first use in the application, and this cannot be amended after the application has been filed.
One of the benefits of such a statement is that a third party which eventually argues a prior use right over an identical or confusingly similar registration that indicates a date of first use, must prove its prior use before the first use date (not the filing date) of the challenged registration.
Despite the fact that indicating a date of first use has this benefit, if a cancellation action is filed by a third party arguing that the date of first use declared by the applicant is false, the trademark holder must prove conclusively the date of first use declared in the application.
The IMPI is diligent when resolving a cancellation action grounded on this basis, and particularly when it
analyses the evidence
offered by the trademark holder in connection with the date of first use declared in the application. The IP bench of the FCTAA has, however, adopted a more flexible criterion regarding the evidence for the date of first use.
This new criterion issued in the past two years establishes that if the trademark holder files any kind of evidence that demonstrates at least that the mark was used within a term of one month before and/or after the specific date of first use declared in the application, there is no false indication.
From the author’s perspective, even though the IP bench’s criterion is more flexible than that of the IMPI, and constitutes a remedy for a trademark holder that cannot prove the exact date of first use declared in its application, it is possible that this could be considered as illegal and revoked by the Federal Circuit Courts, as the date of first use declared in an application is an exact date that cannot be submitted to a subjective criterion.
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“THE APPLICANT IN A TRADEMARK APPLICATION MUST INDICATE THE DATE OF FIRST USE IN THE APPLICATION, AND THIS CANNOT BE AMENDED AFTER THE APPLICATION HAS BEEN FILED.”
In light of the foregoing and in the author’s view, until this criterion is confirmed by the Federal Circuit Courts, it will remain extremely important to demonstrate the exact date stated in the application as the date of first use.
Carlos Hernández León is IP litigation coordinator at Becerril, Coca & Becerril, SC. He can be contacted at:
chernandez@bcb.com.mx
World Intellectual Property Review September/October 2012 107
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