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Mexico is experiencing a time of change and evolution in our IP system. The Mexican authorities are discussing new litigation reforms to the IP Law that could place our legal system at the forefront of IP protection.
One of the most important changes being discussed is the inclusion of trademark partial invalidation actions in order to challenge the validity of trademark registrations granted in Mexico. However, the addition of this action would certainly present a challenge for its regulation and application in the common practice, and at this point the ‘how’ has not been determined.
In light of the above, this article will try to set an overview of what we could expect with the following reforms regarding partial invalidation actions, considering previous international dispositions that have long regulated these type of actions.
First of all, it is important to determine what we should understand as a trademark partial invalidation, which according to the international legislation consulted by the author, mainly consists of partially revoking or cancelling the trademark effects with regard to some of the protected goods or services.
The above may be relevant if there are only some goods or services that are affecting another titleholder or applicant.
Now, expecting that the new reforms consider the mentioned definition for a trademark partial invalidation, the action to request said invalidation should be also included and duly regulated.
In this sense, in order to determine the applicability of this action, we should study different aspects that would be necessary to include in the Mexican IP Law.
To begin with, in the author’s opinion, it is important to establish that a partial invalidation action should be filed only by an affected person who can demonstrate that they are in a legal or practical disadvantage if the challenged trademark remains in force in the form initially registered.
Common scenarios that, according to Mexican precedents and/or jurisprudence, could be considered in order to determine if a person is being affected by a trademark registration could be the following:
The trademark registration is blocking a trademark application; and/or
The trademark registration titleholder is alleging an infringement.
If a person can demonstrate at least one of the above scenarios, it should be considered as affected by the challenged registration and therefore entitled to file a partial invalidation action against it.
Once the above is demonstrated it is important to study possible grounds that could be considered for a partial invalidation action, which should not be different from the provisions already established for invalidation actions, but that necessarily should be limited as not all of them can be applicable.
Taking in consideration the provisions established in article 151 from the Mexican IP Law, for the author it is clear that a partial invalidation action should be grounded only in the following scenarios:
When a trademark is granted in violation of the provisions of the Mexican IP Law;
The trademark is identical or confusingly similar to another that has been used in Mexico or abroad prior to the filing date of the application in respect of the registered trademark and has been applied to the same or similar products or services; or
The registration was granted in error, by mistake, or owing to a difference of judgment, when another registration in force is considered infringed because it is an identical or confusingly similar trademark applied to identical or similar services or products.
"It will be interesting to learn the criteria used by the Mexican Institute of Industrial Property and the rest of the authorities and associations regarding this particular action."
It will be interesting to learn the criteria used by the Mexican Institute of Industrial Property and the rest of the authorities and associations regarding this particular action, when they formally file the legislative proposal for the referred reforms before the Chamber of Deputies, which apparently should be expected before 2018 ends.
Nevertheless, in the author’s opinion, the inclusion of partial invalidation actions in the Mexican IP system is completely necessary to update the current trademark litigation practice and allow more actions to legally defend IP rights from other competitors.
Maria Fernanda de la Cerda is an attorney at Becerril, Coca & Becerril. She can be contacted at: email@example.com
Mexico jurisdiction report, Becerril, Coca & Becerril, IP protection, litigation reforms, trademark infringement, Mexican Institute of Industrial Property