February 5, 2023

Volume XIII, Number 36

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February 03, 2023

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February 02, 2023

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Legal Standing in Trademark Non-Use Cancellation Actions

In recent years the Mexican Patent and Trademark Office (IMPI) allowed the possibility that complainants credit their legal standing on trademark non-use cancellation proceedings through the existence of a trademark application without the need of initially demonstrating that such application was blocked to registration in view of the prior existence of third parties’ confusingly similar registered marks, as long as the official action citing the conflicting registration as pertinent barrier was submitted as subsequent evidence in the proceeding.

Accordingly, it started to be a common practice to file non-use cancellation actions submitting as evidence a certified copy of the trademark application serving as a basis to attack the registration not being used accompanied with the results of an availability search showing the existence of the registration subject to the proceeding.

Nonetheless, such criteria adopted by IMPI was revoked by the Federal Court of Administrative Affairs and by Federal Circuit Courts sustaining that legal standing must be credited initially along with the complaint without being possible to do it at a later stage by submitting the evidence attesting that IMPI objected the registration of complainant’s trademark application on grounds of likelihood of confusion because of the existence of defendant’s registration.

The Court’s reasonings behind the revocation of such criteria were mainly based on legal certainty arguments stating that legal standing can only born when a formal objection is raised by IMPI communicating to the applicant the existence of a citation based on likelihood of confusion.

Therefore, IMPI is now starting to analyze and solve non-use cancellation actions following the Court’s legal reasonings stating that legal standing must be credited initially along with the complaint, without enabling complainants to credit such standing subsequently.

Consequently, it is advisable that titleholders file non-use cancellation actions only after being served with the official actions communicating the existence of pertinent barriers blocking the registration.

© 2005-2023 OLIVARES Y COMPAÑIA S.C.National Law Review, Volume XII, Number 287
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About this Author

Attorney

Jaime Rodriguez is a trademark Attorney at OLIVARES with more than 5 years of experience. His work is mainly focused on registration of distinctive signs, as well as trademark litigation consultancy, providing our clients an integral assistance and advisory with respect to their chances of obtaining an accurate protection in connection with their intellectual property creations, and the defense of the rights derived from the latter. Jaime’s work in Mr. Luis Schmidt’s group gains relevance when providing assistance regarding the link between distinctive signs and...

+52 (55) 5322 3000 Ext. 3406
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