Mexican IP law does not grant the defendant in a prior use cancellation action the chance to offer evidence of its prior use, and the IMPI’s procedures don’t help matters, as Carlos Hernández reports.
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.
Mexico IP law, trademark rights, IMPI