Jurisprudence Clarifies Burden Of Proof In Trademark Invalidation Actions

In binding jurisprudence (a contradicción de tesis) published July 1, 2016, a Mexican appellate court resolved a conflict between prior decisions regarding the burden of proof in trademark invalidation actions brought on the basis of false statements in the application.¹ The court held that the burden in such actions falls on the plaintiff, reversing years of practice by the Mexican Institute for Industrial Property (IMPI) and earlier jurisprudence of IMPI's primary reviewing court.

A trademark registration may be declared invalid under Article 151.III of the Industrial Property Law (LPI) if it was granted on the basis of an application containing false information, regardless of whether the false statement was deliberate or an innocent mistake. Typically, cases under Article 151.III involve dates of first use. Although use is not a requirement for registration, an applicant who does not identify a date of first use in the application cannot later claim priority