The sticky problem of proving first use
One of the benefits is that a third party which later claims a prior use right for an identical or similar trademark over the new registration (which indicates a date of first use) must prove that its use is earlier than the first use date, not the filing date, of the challenged registration.
However, if a third party files a cancellation action arguing that the date of first use declared by the original applicant is false, the trademark owner has the burden of proof, according to the Mexican Institute of Industrial Property (IMPI). Therefore, it is obliged to conclusively prove that the trademark was used on the date of first use declared in the application. Otherwise, the trademark registration will be cancelled as it would be considered that the application contained false data.
One of the topics recently analysed, discussed and published (on July 1, 2016) by all the magistrates of the Federal Circuit courts (FCC) in Mexico City—which are in charge of solving disputes related to administrative matters, including IP matters in the final stage of appeal—relates to the burden of proof in cancellation actions filed against trademark registrations on the basis of false data.
