TRADEMARKS
WHO’S FIRST? PRIOR USE RIGHTS IN MEXICO
Mexican IP law does not grant the defendant in a prior use cancellation action the chance to offer evidence of its prior use, and the IMPI’s procedures don’t help matters, as Carlos Hernández reports.
T
he Mexican legal system recognises the prior use of a trademark in Mexico or abroad as a right that confers on the one
who proves it the ability to attack the validity of a third party’s identical or confusingly similar trademark registration obtained to protect the same or similar products or services, and which was declared as used or filed aſter the primary trademark was used.
Tus, the Mexican legal system gives anyone who proves prior use of a trademark, the chance to enforce a prior right related to a trademark, attack a third party’s trademark registration and, if successful, register his or her own trademark.
Tis right is recognised in Mexican IP law, which expressly establishes that a registration of a trademark shall be cancelled if the trademark is identical or confusingly similar to another that has been used in the country or abroad prior to the date of first use declared in the application of
the registered
trademark, or before its filing date, and that has been applied to the same or similar products or services.
However, even though this right can be exercised by anyone who proves the effective use of a trademark, Mexican IP law limits the exercise of this right to a restricted period of three years aſter publication in the official Mexican IP Gazette of the trademark registration sought to be cancelled. Terefore, the one who seeks to exercise this right must file the corresponding cancellation action based on prior use within this limited term, or such an action will be dismissed.
www.worldipreview.com
Te litis in this kind of action is limited to demonstrating that the plaintiff offered the proper evidence to prove a prior use of the trademark in Mexico or abroad before the date of first use declared in the application of the registered trademark being challenged, or before its filing date.
Terefore, the burden of proof in this type of action is upon the plaintiff, which must submit, along with the claim, enough invoices, brochures, catalogues, etc, to demonstrate its prior use. Te IMPI will then analyse whether the mark was used properly, in accordance with the requirements of the law, by the plaintiff in Mexico or abroad for an uninterrupted period of time before the date of first use declared in the trademark registration sought to be cancelled or before its filing date. It will also check whether the trademark was used to identify the same or similar products or services to those protected by the challenged trademark registration.
Consequently, the analysis by the IMPI in this type of case is a narrow one. It will only analyse whether the evidence submitted by the plaintiff is sufficient to demonstrate an effective prior use of the trademark by such a party in Mexico or abroad, and then determine whether the trademark registration challenged must be cancelled or not.
Even though it is clear that the litis of this
litigation is limited to determining whether the plaintiff has made an effective use of
trademark before the date of first use declared in the trademark registration sought to be cancelled
the
or before its filing date, a problem with this sort of action arises when the defendant argues before the IMPI that he/she has a better right than the use alleged by the plaintiff; he/she will try to demonstrate this by offering evidence of the use of its trademark before the plaintiff’s alleged use.
Tis has been considered one of the biggest problems in connection
with cancellation
actions grounded in prior use, as the IMPI has adopted, in this type of case, the position of not taking into consideration the evidence and arguments filed by the defendants when they try to demonstrate prior use of the mark before the plaintiff’s use of it.
Te reason for this is that the Mexican IP law does not grant the defendant the chance in this kind of cancellation action to offer evidence of its prior use, as the litis is restricted to determining whether the evidence of use submitted by the plaintiff complies with the Mexican IP law and its regulations. Consequently, discussion is restricted to determining whether the plaintiff demonstrated the effective use of its trademark before the date of first use or before the filing date declared in the defendant’s application of the challenged trademark.
As a result, in cases where the defendant has effective evidence of a better prior use than the one alleged by the plaintiff, the only way for the defendant to win back the trademark registration and defend its position is by filing a new cancellation action grounded in the prior use made by the defendant once the IMPI cancels the defendant’s
World Intellectual Property Review Annual 2014 67
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