What constitutes 'use'?
Cancelling a registration
In Mexico, the owner or licensee of a registered trademark must use the mark.
The Industrial Property Law establishes that rights holders (as traders or service providers) can use a mark once they have obtained an exclusive right to do so by registering it with the Mexican Institute of Industrial Property (IMPI). However, to maintain its validity, the registered mark must be used consistently.
The Industrial Property Law does not expressly define 'use of a mark' and the concept has changed over time.
According to the courts' criteria, the term 'use' is defined as beginning when the goods or services that the trademark distinguishes are placed on the market through distribution channels and commercial points of sale. Use continues for as long as these products or services are available to consumers in the quantity and manner prescribed by the customs of trade. In other words, use of a mark is achieved by way of the commercialisation of the products or services for which the registration was obtained by its owner or licensee.
The owner or licensee of a registered trademark must use it, as the Industrial Property Law provides that if a mark is not used for the products or services for which it was registered for three consecutive years, it must be cancelled. This means that any third party which has legal standing or a legal interest in the unused mark can request the IMPI to cancel it, particularly when it is identical or confusingly similar to another mark that has been applied for with regard to similar goods or services and is awaiting registration.
This procedure was established due to the massive demand to register trademarks in Mexico that are not in use. During substantive examinations, the IMPI frequently finds unused registrations that obstruct the granting of new ones.
The existence of these unused marks prevents the registration of new marks because:
- identical or similar marks cannot coexist in the market where they may confuse consumers; and
- the use of such marks would constitute an infringement of the registered IP right.
These obstacles, referred to as 'anticipations', may be trademark applications or registrations, as the rights that they confer on the applicant or registrant may be infringed by new applications.
A new application can attempt to cancel a registration using certain conditions established by the Industrial Property Law. The owner of a registered trademark must use the same mark as the one which was registered and must use it for the products and services for which it was granted. A new applicant is prevented from obtaining the mark due to the existence of a registration for a confusingly similar trademark that protects the same or similar products or services. However, the new applicant can 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 must demonstrate continuous use of the mark with documents – such as invoices, brochures and catalogues. In this respect, it is important to gather evidence of every commercial activity that can demonstrate the use of a registered trademark.
The effective use of a mark must always be verifiable, even for famous registered trademarks. This 'effective use' must be of a mark that is the same as the one for which registration was granted (with no changes to 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 consequences that trademark owners face with regard to an unused mark are serious, as they include cancellation. For legal purposes, this means that the trademark registration will cease to have legal effect and, consequently, that the trademark owner's exclusive rights will be extinguished.
For further information on this topic please contact Rosa Nuria Becerril at Becerril, Coca and Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.
This update was edited from an article originally published in World Intellectual Property Review.