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DEMONSTRATING USE OF TRADEMARKS UNDER MEXICAN LAW AND PRACTICE

The evolution in the protection and enforcement of IP rights has also reached the Mexican practice. The traditional ways of defending a registered trademark on a non use contentious procedure have developed.

DEMONSTRATING USE OF TRADEMARKS UNDER MEXICAN LAW AND PRACTICE

By Eryck Castillo

Uhthoff, Gomez Vega & Uhthoff, S.C.

The evolution in the protection and enforcement of IP rights has also reached the Mexican practice. The traditional ways of defending a registered trademark on a non use contentious procedure have developed. Nowadays, the authority is more demanding regarding the proofs filed therein, while more open into accepting other forms to demonstrate use of a mark.

As a general principle, the Mexican Industrial Property Law (IPL) provides that the lapsing of a registered trademark will occur when the same is not renewed or due to lack of use.

Moreover, in Mexico, manufacturers, merchants and renderers of services may use marks in the industry, trade or their rendered services, however, the exclusive right to use a mark is obtained through its registration before the Mexican Institute of Industrial Property (MIIP).

RENEWALS

The registration of a mark is granted for a term of ten years counted as from its filing date, which can be renewed for equivalent periods of time. No proof of such use has to be filed with the renewal application, since such action is taken as a statement under oath, sufficient for the Authority to consider that the mark has been interruptedly used as it was registered.

Notwithstanding the fact that upon filing a renewal application there is no need to file any documents to support the same, the IPL considers use as a necessary condition to apply for the same, acknowledging the following provisions:

  • Use of the mark should be conducted in the Mexican territory exactly as it was registered or with modifications that do not alter its distinctive character.
  • The use of the mark should not have been interrupted for a period of three or more years.
  • The use should be made by the owner of the mark or by its registered user (licensee).
  • Use should be performed in at least one product or service for which the mark has been registered, even though Mexican law permits a mark to be registered to protect a broad specification of products and\or services (including the class heading).

There is not a definition on Mexican law of what is considered use of a mark, however the regulations of IPL provide that it shall be considered effective use when the products or services covered by the mark have been placed in commerce or are available in the Mexican market, in the amounts and manners corresponding to commerce's use and customs. It is also considered that a mark is in use when it is applied to export products.

NON USE CANCELLATION ACTION

It becomes necessary to demonstrate the use of a mark before the Authority whenever the registration is challenged based on non use. IPL establishes that the right to request the cancellation of a mark due to lack of use can be exercised by any third party, by the Prosecutors Office or ex-officio. The lapsing of the registration will be declared unless the owner or the registered user demonstrate use of the mark during the three consecutive year term immediately preceding the filing of the application requesting the administrative declaration of lapsing.

An exception to the above rule is when there exist circumstances arising independently from the will of the holder of the registration, which constitute an obstacle for the use of the mark, such as import restrictions or other government requirements applicable to the goods or services to which the mark is applied.

Whenever a mark is challenged based upon non use, the burden of proof relies on the owner of the same. The traditional proofs of use accepted by the administrative and judicial authorities are:

  • Documents such as invoices, shipment orders, custom notices, etc., which evidence the sale of the products or the rendering of the services. This documents should include a date, the name of the owner or registered user, the mark and the products or services for which it was registered.
  • Advertising material in newspapers or magazines having circulation in Mexico that demonstrate the use of the mark. The printed materials should also preferably show a date, the name of the owner or registered user, the mark and the products or services for which it was registered.
  • Affidavits from customers of the owner of the mark attesting use of the mark as applied to the products or services for which it was registered.

RECENT ADMINISTRATIVE AND JUDICIAL RESOLUTIONS

We have mentioned herein the main legal provisions related with the use of a registered trademark, its maintenance thereof and the consequence for its lack of use. Following, are some resolutions explaining the criteria adopted by the administrative and judicial authorities in connection hereto.

  • The invoices should expressly mention the mark on the merchandised products. The MIIP held that invoices that include a "water mark" showing the challenged mark, but do not mention the mark on the merchandised products, are not accepted to demonstrate use of the corresponding mark in a contentious proceeding.
  • The Federal Court held that use conducted by a distributor without any license agreement recorded before the MIIP benefits the owner of the mark. The judicial authority recognizes the use made by the distributor as long as such use is always under the control of the owner of the mark.
  • If the mark is subject of an assignment, the use made by the prior owner will benefit the assignee. The Federal Court held that a connection of rights exists between the parties, therefore, when the mark is assigned, the prior use conducted by the assignor will inure to the benefit of the assignee.
  • The use of a mark through the Internet is also considered as valid. The Federal Court held that the Federal Code of Civil Procedures provides that the information generated or communicated through electronic or optic media, or any other technology, is recognized as an effective way to demonstrate use. It stated that the Internet is an electronic communication media consisting of a worldwide system to spread and obtain information on diverse topics.
  • Advertisement of services in newspapers is considered as use of the mark. The Federal Court held that an advertisement placed in a newspaper offering the rendering of services is sufficient to demonstrate use of a mark in Mexico.

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