The concept of trademark 'use'

24-11-2016

Becerril, Coca & Becerril

In Mexico, the use of a trademark registration is an obligation for its owner or licensee.

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.

"Undoubtedly, the effective use of a mark must always be verifiable, even for famous registered trademarks."

The existence of these unused marks prevents the registration of new marks because there must not be identical or similar marks in the market that may confuse consumers, and these would constitute an infringement of the registered IP right.

These obstacles, called “anticipations”, may be trademark applications or registrations in force whose rights may be infringed by these new applications. Therefore, why can a new trademark application attempt to cancel a trademark registration in force?

The answer is included in certain conditions established by the Mexican IP law. A trademark registration must be used in the same way as it was registered, effectively in the national territory, and for the products and services for which it was granted.

This is the point when the owner of a new application is prevented from obtaining it due to the existence of a registration for a confusingly similar trademark that protects the same or similar products or services. This also provides an opportunity for the new mark to challenge the validity of the prior registration.

The burden of proof in this type of procedure belongs to the owner of the registration that is subject to cancellation. This means that it has to demonstrate continuous use of the mark with documents, which may consist of invoices, brochures, catalogues, etc. It is important to gather evidence of every commercial activity that is suitable to demonstrate the use of a registered trademark.

Undoubtedly, the effective use of a mark must always be verifiable, even for famous registered trademarks. This “effective use” must be made in the same way that the registration was granted (without altering its distinctive character). As time passes, it is vital to obtain new trademark registrations according to the changes and updates that the brand experiences.

The risk that a trademark owner faces concerning a mark that is not being used is critical, since it may be cancelled. This means, for legal purposes, that the trademark registration ceases to have legal effect and, consequently, the exclusive rights in favour of the trademark owner are extinguished.  

This article was written by a lawyer who has now left Becerril, Coca & Becerril. For more information, contact Nuria Becerril at: rbecerril@bcb.com.mx

Becerril, Coca & Becerril, Mexican Institute of Industrial Property, trademark, licensing, registration,

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