Date of first use: in Mexico or abroad?

It is not mandatory to declare a date of first use. However, the main purpose of indicating one in the application is to make a particular statement about the use of the mark in order to place a precedent in the official file.

The applicant does not need to prove the date with documents for the application to proceed. Nevertheless, it is important to declare a date as long as the applicant holds enough evidence (primarily invoices, but also import/export orders, magazines, newspapers and the like) to prove such a date in case the mark is challenged by a third party on the grounds of false data contained in the application.

Declaring a date is helpful as otherwise a third party can challenge the validity of a trademark registration on the grounds that he presumes the application was filed with false data; challenging, for example, the date of first use declared in the application form. Therefore, if a date of first use is declared, it is important to preserve the evidence that demonstrates it is correct.

"if a date of first use is not declared, the third party must prove his/her prior use before the filing date of the application of the trademark challenged."

It has always been difficult to determine whether such a date of first use stated in the application form refers to first use in Mexico or in another country, as neither the Mexican Industrial Property Law (MIPL) nor any other legislation, or even the application form, indicate whether first use must have taken place in Mexico.

In particular, Article 113 of MIPL establishes that, in order to obtain a trademark registration, the application must include, among other requisites, the date of first use of the mark as that cannot be modified or amended at a later stage. The article also establishes that, in the absence of an indication to the contrary, it will be presumed that the mark has not been used. However, the Mexican practice, and several authorities working in the Mexican Institute of Industrial Property (IMPI), agree that the date of first use should be the date of first use in Mexico.

At the moment, in accordance with MIPL it is possible to file a cancellation action against a trademark registration when a mark is identical or confusingly similar to another that has been used in Mexico or abroad prior to the filing date of the application of the granted mark or prior to the date of first use stated in the application for the granted mark.

In this regard, it is clear that even if MIPL does not establish whether the date of first use mentioned in the application must be in Mexico or in another country, the law recognises the possibility of cancelling registrations previously granted by the IMPI when the registered mark is identical or confusingly similar to one that has been used in Mexico or abroad, provided that it is prior to the date of filing. Therefore, in the opinion of this author, the date of first use declared in the application form should be that of first use either in Mexico or abroad, and not limited to Mexico.

The main advantage of declaring a date of first use is that if a third party files a cancellation action against the trademark registration on the grounds of prior use in Mexico or abroad, he/she must prove his/her prior use before the date of first use declared in the application. Otherwise, if a date of first use is not declared, the third party must prove his/her prior use before the filing date of the application of the trademark challenged. In order to avoid eventual problems for applicants, it is advisable that Mexican legislation should make clear whether the date of first use declared in the application form should be in Mexico or in any other country. If not, this could result in disputes that would have to be decided by the Mexican courts.

Victor M. Adames is an associate at Becerril, Coca & Becerril, S.C. He can be contacted at: vadames@bcb.com.mx