Actual criterion of use of a trademark in Mexico


Carlos Hernández i

It is an obligation of trademark holders to use their trademarks as they were granted by the Mexican Institute of Industrial Property or with slight modifications that do not alter their distinctive character, in order not to be subject to a cancellation action grounded in non-use.

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.

trademarks, IMPI, trademark litigation