By: Emilio Carrillo
The Date of First Use is the date in which a Trademark was first used in commerce. This is very important since the Mexican Law grants rights to an applicant that has a prior use of a certain Trademark. A good example is the right to file a cancellation action on the basis of prior rights.
However, in order to obtain the recognition of a first use, it is absolutely necessary to have an uninterrupted use as of the date in which said use started until the filing date of the application. It is also necessary to state this date at the time of filing the application and it cannot be amended in the future. If no date is stated, the trademark will be considered as not used.
Additionally, according to the provisions of the Law it is possible to obtain recognition of the first use of a Trademark, which use may have begun in any other country of the world. In the former provisions related to the first use, it was only possible to obtain recognition of a first use, if such use was conducted in Mexico.
On the other hand, it is important to highlight that it is not sufficient to state a Date of First Use. Indeed, applicant must have all the documentation to prove said First Use. Otherwise, the enforceable date would be the date of filing.
As an example of the above, we may recall that there have been cases wherein a trademark owner has stated a date of first use that could not be proven at the time of filing a cancellation action against another trademark registration. In this case, the case had to be abandoned. The solution for this case was to re-file the application mentioning the correct date and, afterwards, initiate again the cancellation action.
Some other trademark owners have had problems regarding a cancellation of their own Trademark Registrations on the basis that they were granted in contradiction to the law, since the application included false information. In these cases, the problem was that a certain date was stated, and when a third party interested in registering the same or a similar Trademark argued that said date was false, and the trademark owner was not capable of proving said date of first use, its registration was cancelled.
"The content of this article is intended only to provide general guidelines related to this particular matter. For your specific circumstances, full specialist advise is recommended"