Is it necessary to file evidence of use of a trademark in Mexico to keep it alive?

August 6, 2008 at 9:38 PM Leave a comment

 

There are two frequent questions I receive from foreign colleagues and Mexican businessmen regarding maintenance of Mexican trademark registrations.

 

One is if it is required to file evidence of use of a trademark with the Mexican Patent and Trademark Office (MPTO) from time to time in order to keep a trademark registration alive. The answer is ‘no’.

 

The other question is: If it is not required by the statute, why some Mexican trademark lawyers insist in this filing every three years?

 

Since 1991 it is not necessary to file statements or evidence of use of a trademark with the MPTO in order to keep a trademark registration in force. It does not mean, however, that stopping using a registered trademark would not have negative consequences. If the use of a registered trademark is interrupted for three consecutive years or more, the registration would become vulnerable to a cancellation action by a third party with adverse legal standing.

 

Notwithstanding the above, when renewing a trademark registration (Mexican trademark registrations are renewed every ten years), the attorney of record must stated under oath with the MPTO that the trademark is being used on at least one of the goods or services covered by the registration, and that the use of the trademark has not been interrupted for three consecutive years or more (specimens are not required). Therefore, a registered trademark that has not been used for three consecutive years should not be renewed.

 

Some Mexican colleagues state that filing proof of use every three years with the MPTO would prevent third parties from filing a cancellation action on grounds of lack of use, although such opinion lacks of support on the statute or some precedent from the courts.

 

The effects to filing evidence or statements of use from time to time would be limited to dissuade third parties from challenging the trademark registration, if the trademark owner shows that it would have evidence to defend the registration if it becomes necessary. Therefore, and assuming it is not a trademark renewal, filing a statement of use (even under oath) would not provide any actual benefit for the trademark owner. In any case, the MPTO would issue an office action, but it would only be an acknowledgement of receipt; it would not acknowledge that the registrant proved the use of the mark.

 

If a third party files a cancellation action on grounds of lack of use, the trademark owner would have to prove that the trademark has been used in Mexico, either by the registered owner or a recorded licensee, regardless the evidence of use previously filed.

 

If a trademark owner is interested in filing some evidence of use in order to discourage third parties from challenging its trademark registration on grounds of non-use, we suggest filing evidence that would actually show the use of a trademark in Mexico, as in a cancellation action; a label or an affidavit of use would not be effective.

 

It is important to be very careful when filing proof of use with the MPTO. Filing wrong or insufficient evidence may actually encourage a third party to file the cancellation action due non-use instead of dissuading it.

 

When the filing of the evidence effectively discourages a third party from challenging the registered trademark, the trademak owner saves of thousands of dollars in attorneys fees, preparation of evidence and uncertainty about the outcome of the action. Unfortunately, the benefit is extremely difficult to measure. 

Entry filed under: Trademark law. Tags: , , , , , , , , .

Trademark and Patent marking under Mexican law Ownership on Works and Inventions by Employees in Mexico

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

Trackback this post  |  Subscribe to the comments via RSS Feed


Enter your email address to subscribe to this blog and receive notifications of new posts by email.

Join 236 other followers