T he Mexican trade mark system has adopted a sui gener-is (or characteristically unique) approach to trade markuse. In most cases, the system does not grant common

law rights. Thus, the sole way to obtain the exclusive right touse and to enforce a trade mark is through a registrationobtained from the Mexican Institute of Industrial Property(IMPI).

Unlike the American trade mark system, where in order toobtain protection it is required that the right holder be the firstto use the trade mark in commerce, in Mexico trade markapplications can be filed and registered on a so-called intent touse basis. Under this system, there is no need to file proof ofuse in connection to any of the goods/services included in theapplication.

After the registration is obtained, the owner of the trademark registration will have a three-year term counted fromits date of registration to start using the mark in the countryin connection to any of the goods/services covered by thetrade mark registration. If there is no use during this timeperiod, the registration will be vulnerable to a cancellationon grounds of lack of use, as long as the cancellation is filedby a third party with legal standing. The use of a trade markin connection to any of the covered goods/services is enoughto maintain all of them, as there are no partial cancellationsin Mexico.

Perks for early birdsNotwithstanding the above, the Mexican Industrial PropertyLaw provides some benefits to the earlier user of a trade mark.A trade mark registration may not be enforceable against thedirect user (bona fide user) of a trade mark that started usingit in Mexico before the filing date of the registered trade markor the date of first use claimed in the application. However,this exception cannot be transferred to third parties, and nolicences may be granted.

On the other hand, a trade mark registration may be chal-lenged on grounds of earlier and continuous use of the mark inMexico or abroad. In order to bring a cancellation action ongrounds of earlier and continuous use abroad, the plaintiffmust have legal standing, which generally is obtained with evi-dence of use and a Mexican application filed on an intent-to-use basis.

However, in order to bring a cancellation action on groundsof earlier and continuous use in Mexico, in addition to the evi-dence of use, the application must indicate a date of first use ofthe mark in Mexico.

It is very common that Mexican applicants are instructed tofollow US practice by indicating that the date of first use inMexico should be claimed in connection to only some of thegoods or services. However, it is very important to keep inmind that, according to the Mexican Law and practice, youmay include in the description all of the goods or services thathave been used as well as the ones that will be used. The dateof first use does not need to indicate the particular goods orservices, even if some of them may be on an intent-to-use basis.

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Claim first use carefully

Enrique Diaz and Satoshi Yoshiki advise trade mark owners to consider the ups and downs ofclaiming first use in Mexico

Education: Centro Universitario México(Mexico City); Universidad Panamericana(Mexico City)(Specialization in Intellectualand Industrial Property Law).

Practice areas: Industrial Property Rights;Intellectual Property Enforcement;Intellectual Property Infringement;

Intellectual Property Licensing; Intellectual Property Litigation;Intellectual Property Protection; International Licensing;Intellectual Property Rights; Internet Intellectual Property;Software Licensing; International Copyright Law; CopyrightLicensing; Copyright Registration; Copyright Infringement;Trade mark and Patent Filing and Prosecution in Mexico andLatin America; Trade Names; Trade Dress Protection; Trademark and Patent Infringement; Trade mark Registration;Trade mark Litigation; Domain Names Disputes; PatentLicensing; Patent Litigation; Entertainment Law.

Member: Mexican Bar Association; INTA; ASIPI; LES;2008-2009 Non-Traditional Trademarks Committee(INTA); (AMPPI) Mexican Association for the Protectionof Industrial Property.

Languages: Spanish, English and French.

Enrique A Díaz

MEXICO: FIRST USE

Education:Universidad Iberoamericana(Mexico City)

Practice areas: Industrial Property Rights;Intellectual Property Enforcement;Intellectual Property Infringement;Intellectual Property Litigation; IntellectualProperty Protection; Intellectual Property

Rights; Internet Intellectual Property; CopyrightInfringement; Trade Dress Protection; Trade mark andPatent Infringement; Trade mark Litigation; DomainNames Disputes; Patent Litigation.

Member: Mexican Bar Association; (AMPPI) MexicanAssociation for the Protection of Industrial Property Law

Languages: Spanish and English.

Satoshi Yoshiki

Avoid first use pitfallsAs previously explained, a trade mark registration may begranted without the requirement of filing proof of use,notwithstanding that a date of first use in Mexico may havebeen claimed in the application. In principle, such statement isnot required to be supported by any evidence to be filed withIMPI. However, as we will explain, the registration may bechallenged on grounds of false information stated in the appli-cation, which among others, may refer to the date of first usein Mexico stated in the application.

There is a potentially serious disadvantage to stating a dateof first use in Mexico in a trade mark application, which islargely related to a lack of knowledge of the risks of claimingthis right or incautious advice regarding the conditions uponwhich this statement should be made.

As previously explained, Mexico is a registration-orientedcountry and common law rights are not recognised in regula-tions. Therefore, according to Mexican Industrial PropertyLaw, non-registered trade marks may not be licensed orassigned unless a trade mark application filed with IMPI ispending for registration.

If a third party brings a cancellation action on grounds offalse information contained in the application based on thedate of first use, besides having to prove the exact date claimedin the application, it is crucial to note that IMPI will not accept

a use performed by a different person or entity from the appli-cant, including a Mexican distributor/user, in spite of beingable to prove corporate or commercial relationships or anyother connection that may exist between the applicant and theactual user.

Accordingly, while the date of first use claimed in theapplication does not have to be proven during the registra-tion process, if the date of use is inaccurate or it is not sup-ported by suitable documentary evidence reflecting that theregistrant was the actual user in Mexico on the claimed date,

the trade mark registration would bevulnerable to cancellation due to falseinformation.

If the application/registration includ-ed several goods or services and a date offirst use in Mexico was claimed, the evi-dence showing the use in connection toone of them would be enough to support

the rest of the goods or services, whether they have been usedor not.

Furthermore, according to the criterion of IMPI and theFederal Courts responsible for hearing and ruling uponappeals in the matter, the burden of proof in cancellationactions on grounds of false information provided in the appli-cation is reverted to the defendant. Thus, in contrast to thegeneral rule in litigation by which the plaintiff has to prove itsown petition, in these cases the registrant has to demonstratethe accuracy of the declaration of first use, namely, that it wasactually using the trade mark in Mexico on the claimed dateof first use.

Have the right evidenceMexico is a very formalistic country, so the evidence that

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MEXICO: SPONSORED EDITORIAL

“IMPI will not accept a use performed by a different person or entity from the applicant”

should be provided in support of a well-founded defenceagainst this ground of cancellation must consist of originalor certified documentary evidence reflecting the use of themark in the specific claimed date and in the name of the reg-istrant. Unsuitable evidence, even if admitted, can be easilyobjected to by the plaintiff and most likely dismissed by theauthority.

Due to the statute of limitations provided in the MexicanIndustrial Property Law, the cancellation action on grounds offalse information contained in the application may be broughtduring the following five years countedfrom the date the registration was pub-lished in the Industrial Property Gazette,which means that a trade mark registra-tion with an inaccurate or unsupportedstatement about the date of first usewould be vulnerable to cancellation forat least half of the initial life term of theregistration.

In spite of the fact that this ground for cancellation is a pos-

sibility for every statement or piece of information containedin a trade mark application, most of the cancellation actionsbased on this ground are related to the date of first use inMexico.

Considering the above pros and cons, trade mark rightholders are advised to evaluate on a case by case basis the con-venience of claiming a date of first use in Mexico before filinga trade mark application in the country. Additionally, rightsholders should consider filing on an intent-to-use basis fortrade marks that may have been already used in Mexico

through third parties, including distributors, licensees andwholly owned subsidiaries.

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MEXICO: FIRST USE

“An inaccurate statement about the date offirst use would make the trade mark vulnerableto cancellation”