1 October 2012Jurisdiction reportsCarlos Hernández León

When is a date of first use not a date of first use?

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 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."

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.

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.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk