24 November 2016Jurisdiction reportsBecerril, Coca & Becerril

The concept of trademark 'use'

The Mexican Industrial Property Law establishes that rights owners (as traders and/or service providers) can use their marks when their exclusive right is obtained through a registration issued by the Mexican Institute of Industrial Property (IMPI). However, this registration must be constantly used to maintain its validity.

What is “use” in the field of industrial property? The Mexican IP law does not expressly establish the definition, and the concept of “use of a mark” has varied over time.

According to the Mexican courts’ criteria, the term “use” is defined as the moment when the goods or services that a trademark distinguishes have been placed on the market through distribution channels and commercial points of sale, and when these products or services are constantly available to consumers in the quantity and manner according to the customs of trade.

In other words, the use of a mark is achieved with the commercialisation of the products or services for which the registration was made by its owner or licensee.

The “use” of a registered trademark is an obligation for the owner or licensee to implement. The reason? The Mexican IP law provides that if a mark is not used for three consecutive years for the products or services for which it was registered, it must be cancelled.

This action provides the possibility that any third person with legal standing or interest can request the IMPI to cancel an unused trademark, particularly when it is identical or confusingly similar to another that is applied for similar goods or services and is waiting to be registered.

Unused trademarks

This procedure was created because of the massive demand for trademark registrations in Mexico that are not in use. During substantive examinations the IMPI frequently finds unused registrations that obstruct the granting of new ones.

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