1 September 2013Jurisdiction reportsCarlos Hernández i

Actual criterion of use of a trademark in Mexico

Due to the above, trademark holders are compelled to conserve all kinds of evidence of use of their registered trademarks in Mexico for a period of at least three consecutive years, so if they eventually face a cancellation action grounded in non-use, they can offer this evidence in the litigation proceedings in order to obtain a favourable decision.

Even though in accordance with the Mexican IP law almost all kinds of evidence are admissible in litigation proceedings, including that related to the use of a trademark, the IMPI has determined that the best evidence to demonstrate the use of a trademark in Mexico is invoices that prove the commercialisation within the Mexican territory of the products or services distinguished by the challenged trademark.

Although the above criterion is favourable for those trademark holders that have a commercial establishment located in Mexico, who can directly sell products distinguished by their trademarks, or for those who commercialise their products directly in Mexico through licensees, it has not been positive for those trademark holders that only commercialise their products outside the Mexican territory and import the same to Mexico.

Therefore, in litigation proceedings the IMPI has disregarded invoices or documents issued abroad that demonstrate the commercialisation of products distinguished by the mark sought to be cancelled, even when such documents expressly refer to the fact that the products are imported and commercialised in the Mexican territory.

The IMPI considers such use as taking place abroad. Therefore, according to the IMPI’s restricted criterion and misinterpretation of the Mexican IP law, this kind of evidence only demonstrates the use of the challenged mark outside the Mexican territory, notwithstanding that the product will be definitely imported into Mexico.

"Because the federal courts' decisions are not binding on the IMPI, it is still applying its restricted criterion and consequently cancelling trademark registrations under these grounds."

This criterion has been overturned by the federal courts in isolated cases whereby they have considered that the importation of goods reflects the intention of the trademark holder to commercialise in the Mexican territory, allowing trademark holders to defend their trademarks in litigation.

Because the federal courts’ decisions are not binding on the IMPI, it is still applying its restricted criterion and consequently cancelling trademark registrations under these grounds. In the author’s opinion, even when the IMPI can order the cancellation of a mark for not being used in Mexico in accordance with its criterion, the trademark holder can revoke its negative decision under the grounds of the federal courts’ reasoning, if it can prove two important facts: that the products distinguished by the mark were effectively imported into Mexico and that the products imported were introduced into Mexico with the intention of commercialising them.

Trademark holders should not be discouraged from trying to defend the use of their trademarks by this type of restricted criterion, since decisions such as these can be reverted by the highest courts.

Therefore, it is important to preserve all kinds of evidence of use of registered trademarks in Mexico for at least three years, whether they were issued in Mexico or abroad, in order to defend the trademark in an eventual litigation proceeding.

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