Mexico jurisdiction report: Changes to invalidation actions

The main reforms that altered the trademark litigation actions concern invalidation actions. Particularly, these reforms resulted in the inclusion of invalidation actions grounded on bad faith, as well as the extension of the time period during which it is possible to proceed with an invalidation action grounded on prior use (in Mexico or abroad).

Before August 10, 2018, the statutory term to proceed with an invalidation action grounded on prior use was delimited by the date when the trademark registration subject to invalidation was published in the Mexican Industrial Property Gazette. The invalidation action should be filed within the three years following the publication of the trademark registration.

Now, under the reformed Mexican IP Law, the statutory term for filing an invalidation action grounded on prior use was extended to five years with the aim of granting more legal certainty to the trademark holders and to avoid ‘trademark kidnapping’ practices (also known as ‘trademark hijacking’).

In the author’s opinion, the extension of the statutory term for proceeding with an invalidation action was a positive change, as it refines Mexico’s trademark litigation system.