Who's first? Prior use rights in Mexico

The 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 after the primary trademark was used.

Thus, 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.

This 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 after publication in the official Mexican IP Gazette of the trademark registration sought to be cancelled. Therefore, 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.

The 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.

Therefore, 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. The 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.

"one benefit of moving to a single action would be that the parties involved would have certainty as to which of them had the prior use of the trademark."

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 the trademark before the date of first use declared in the trademark registration sought to be cancelled 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.

This 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.

The 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 trademark registration and grants to the plaintiff its corresponding trademark registration.

This results in a delay in the study of the arguments and evidence that the defendant has in connection with its use of the trademark as the IMPI obliges the parties to be involved in two litigation actions, the first initiated by the party that alleges to have a use prior to that of the holder of the trademark registration, and the second initiated by the one that was the defendant in the original proceedings once its registration is cancelled, arguing it has a better right as he/she used the trademark before the one argued and proved by the other party, which was the original plaintiff.

With this in mind, it is extremely important that the Mexican IP law changes to allow the IMPI to assess prior use not only in respect of the date of first use or of the filing date of the challenged trademark, but also in the light of any evidence from the defendant that demonstrates a better use than the one argued by the plaintiff.

If the law were changed in this way, the IMPI would be able to modify its position and criteria in connection with this type of case. It could study, in particular, all the arguments and evidence offered by the plaintiff and by the defendant in a cancellation action grounded in prior use, ensuring that the parties are not involved in two prolonged litigation actions and instead obtain just one decision determining which of them had prior use of the trademark in conflict.

In this author’s opinion, one benefit of moving to a single action would be that the parties involved would have certainty as to which of them had the prior use of the trademark in conflict, avoiding the unnecessary expense and wasted time of filing a new action after the first resolution.

However, as long as the Mexican IP law continues to restrict the litis of this type of cancellation action as mentioned above, and, as a result, the IMPI continues to maintain its criterion of studying only the evidence submitted by the plaintiff to prove a prior use without assessing the eventual evidence filed by the defendant, the parties will have to be involved in two actions.

Therefore, considering the current scenario after the first resolution, the former defendant’s only possible action—in the event that the use he/she wants to claim is prior to the former plaintiff’s use of the trademark—is to argue and prove that he/she has a better right than the former plaintiff only through a second litigation action.

Carlos Hernández is manager of IP litigation at Becerril, Coca & Becerril. He can be contacted at: chernandez@bcb.com.mx