It is well known that according to Mexican intellectual property law, a trademark registration can be cancelled if it is not renewed or if the owner or licensee, duly recorded before the Mexican Institute of Industrial Property (IMPI), has not used the trademark for the goods or services covered within a period of three years from the filing date of a cancellation action.
In light of the above, the next question would be: who is entitled to file a cancellation action based on non-use? The answer is simple: it is the one who has the legal standing to file it. However, issues arise trying to determine how the legal standing is supported during a cancellation action.
A sector of the Mexican IP practice has advocated that the legal standing of a plaintiff filing a cancellation action based on non-use might be supported only with a trademark application. This was the latest criterion adopted by the IMPI and the Federal Court of Tax and Administrative Affairs. Others have suggested that the legal standing should be supported by the trademark application plus the existence of an office action issued by the IMPI citing as anticipation the trademark registration sought to be cancelled.
In accordance with the first argument there is no certainty that the registration sought to be cancelled constitutes a bar to the plaintiff’s application. The certainty then arises from the office action citing the anticipation.
"The decision of the SCJN is not clear and it can be interpreted as allowing both of the mentioned criteria."
Consequently, these differences have provided opposite precedents from the Federal Circuit Courts. The controversial precedents were studied by the Supreme Court of Justice (SCJN), which has issued an unclear decision. However, this decision has pushed the authorities to adopt the criterion that the legal standing for filing a cancellation action based on non-use must be supported with the plaintiff’s trademark application and an office action that cites as anticipation the trademark registration sought to be cancelled.
The consequences of having adopted this new criterion are that many of the cancellation actions that were filed without the corresponding anticipation-citing office action are being dismissed. This is causing the affected parties to file lawsuits in order to revert such decisions.
In the author’s opinion, a long way lies ahead to be explored, since as mentioned before, the decision of the SCJN is not clear and it can be interpreted as allowing both of the mentioned criteria. Therefore, we should wait for the federal circuit courts or maybe the SCJN to study again each particular case in this regard and wait for them to issue new decisions.
With the passing of time, new precedents should mature that clarify this path so that plaintiffs trying to obtain the cancellation of a trademark registration based on non-use are certain about how to support their legal standing.
Rodrigo Navarro is a litigation attorney at Becerril, Coca & Becerril. He can be contacted at: rnavarro@bcb.com.mx
Rodrigo Navarro, Becerril, Coca & Becerril, SCJN, IMPI, trademark, trademark cancellation,
