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
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 based on use
before the application filing date.
The LPI is silent on the burden of proof under Article 151.III.
However, Article 190 of the LPI states that in contentious
proceedings, the complaint must be accompanied by evidence
supporting the allegations, from which it may be implied that the
burden of proof is on the plaintiff. Further, under Article 81 of
the Federal Code of Civil Procedure, a plaintiff must prove the
facts that form the basis of its action. However, Articles 82.I and
82.II of the Code state that a party who denies a fact need only
support the denial with evidence if the denial involves the express
affirmation of another fact or if it seeks to rebut a legal
presumption. The application of these principles to cases arising
under Article 151.III was subject of great debate between
plaintiffs and registrants.
Historically, IMPI has placed the burden of proof on the
registrant, reasoning that the documents required to prove the
truth or falsity of a claimed date of first use are in the position
of the registrant.2 IMPI's primary reviewing court,
the Federal Court for Fiscal and Administrative Justice (TFJFA),
reached the same conclusion in binding jurisprudence published in
2006.3 However, the Collegiate Circuit Courts for
Administrative Matters of the First Circuit, which review decisions
of the TFJFA, have issued conflicting decisions.4
The present decision, published by the Plenary of the Collegiate
Circuit Court for the First Circuit,5 resolves the issue
by placing the burden of proof on the plaintiff. The court reasoned
As a general rule, that which is
"ordinary" may be presumed, while that which is
"extraordinary" must be proven.
An applicant for trademark
registration need not provide evidence to corroborate its claimed
date of first use. In other words, the LPI presumes the good faith
of the applicant and the accuracy of the date of first use claimed
in the application.
Because of this presumption, a
plaintiff seeking the invalidation of a trademark registration
under Article 151.III is claiming something
"extraordinary" (an incorrect date of first use) which
must be proven.
Further, from a public policy
standpoint, placing the burden on the registrant to corroborate its
claimed date of first use encourages the filing of baseless
invalidation actions under Article 151.III.
Since there is virtually no discovery under Mexican law, the
initial burden of proof often determines the outcome of the
litigation. Thus, the likely effect of the Court's decision
will be to greatly reduce the number of successful invalidation
claims under Article 151.III of the Industrial Property Law.
1. Contradicción de tesis 9/2016,
published July 1, 2016, tesis PC.I.A. J/78 A
2. Since there is virtually no discovery under Mexican
law, the plaintiff usually has no access to the defendant's
3. 5ª Época, RTFJFA, Año VI, Tomo I,
No. 61, Enero 2006, p. 30, tesis V-J-SS-90.
4. The Collegiate Circuit Court for the First Circuit is
an intermediate appellate court in Mexico City. It is the court of
last resort for most federal cases within its territorial
jurisdiction which do not involve questions of fundamental human
rights or constitutional law.
5. The Court has various chambers organized by subject
matter. The administrative law chambers hear appeals from the
Special Intellectual Property Chamber of the TFJFA. If, as here,
the chambers issue conflicting decisions, the Plenary of the Court
can resolve the conflict by publishing a contradicción
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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