The Mexican Industrial Property Law (MIPL) has suffered several amendments this year that will strengthen our system and will make our country more competitive before other countries. One of the amendments that should not be overlooked is the one related to the declaration of the date of first use of a trademark within Mexican territory on the trademark application.
Before the amendments, it was not mandatory to declare a date of first use in the application papers. Therefore, it was possible to file the application without indicating any information, neither a date of first use, nor a declaration that the trademark was not yet in use. In this regard, in case the trademark application was filed by not establishing the date of first use, nor declaring that the trademark was not being used, the application was filed under the assumption that the mark was not in use, leaving in the safe side the opportunity to demonstrate a prior use of the mark during a litigation procedure, if eventually it was necessary.
If the date of first use of a mark in Mexico was declared, it was mandatory that the applicant held proof to support such declaration of use in connection with the intended goods or services in the specific class, just for the eventual case it turned necessary to prove the accuracy of the date of use during a litigation proceeding. Otherwise, if the company did not hold such proof, it was advisable to file the application without indicating any date, since such information could not be amended at a later stage. In this regard, if a date of first use was declared, it was compulsory to provide the "Establishment address of the first use in Mexico".
According to the MIPL new amendments, which entered in force last August 10, 2018, if a trademark has been used in Mexico, date of first use must be declared in the filing papers since these amendments establish that "in the absence of indication of a date of first use, it will be understood that the mark has not been used", while the former previsions of the Law stated that "in the absence of indication of a date of first use, it will be presumed that the mark has not been used". According to the above, the applicant must hold evidences of the use of the trademark, such as invoices, brochures, catalogs, etc. issued by the applicant or by a licensee in Mexico, to support this date of declaration of use of the trademark in connection with the goods/services in the international class of interest.
Although there would be no adverse effect such as receiving an official action if we leave the date of first use space in blank, there is a possibility that any third party argues to have a prior use. This party may challenge the validity of the trademark claiming a prior use before the filing date of the application, in which case the owner of the trademark in distress will not be able to file any evidence to demonstrate this prior use of the mark before the filing date, considering the blank space. It will be understood that the trademark has not been used by its owner.
However, in case the applicant has used the trademark in Mexico, and a date of first use is declared in its application, the third party that argues to have a prior use must prove a use that is prior to the date of first use declared in the owner's application.
Consequently, the benefit of declaring a date of first use at the moment of filing the trademark application is that any third party that wants to file a cancellation action under the grounds of prior use must prove an earlier use from the date of first use declared in the application. Otherwise, leaving the space in blank in the trademark application gives the third party the opportunity to prove a prior use from the filing date of the application.
In conclusion, it would be recommendable to declare the date of first use within the Mexican territory of a trademark in its application, provided that the applicant is able to supply the necessary evidence of use of the trademark to protect the products or services intended in case of a future conflict. Nevertheless, if the necessary evidence is not available, it would be advisable not to declare the date of first use.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.