ARTICLE
14 October 2022

Legal Standing In Trademark Non-Use Cancellation Actions

O
OLIVARES

Contributor

Our mission is to provide innovative solutions and highly specialized legal advice for clients facing the most complicated legal and business challenges in Mexico. OLIVARES is continuously at the forefront of new practice areas concerning copyright, litigation, regulatory, anti-counterfeiting, plant varieties, domain names, digital rights, and internet-related matters, and the firm has been responsible for precedent-setting decisions in patents, copyrights, and trademarks. Our firm is committed to developing the strongest group of legal professionals to manage the level of complexity and interdisciplinary orientation that clients require. During the first decade of the 21st century, the team successfully led efforts to reshape IP laws and change regulatory authorizations procedures in Mexico, not only through thought leadership and lobbying efforts, but the firm has also won several landmark and precedent-setting cases at the Mexican Federal and Supreme Courts levels, including in constitutional matters.
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...
Mexico Intellectual Property
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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Nonetheless, such criteria adopted by IMPI was revoked by the Federal Court of Administrative Affairs and by Federal Circuit Courts sustaining that legal standing must be credited initially along with the complaint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.

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ARTICLE
14 October 2022

Legal Standing In Trademark Non-Use Cancellation Actions

Mexico Intellectual Property

Contributor

Our mission is to provide innovative solutions and highly specialized legal advice for clients facing the most complicated legal and business challenges in Mexico. OLIVARES is continuously at the forefront of new practice areas concerning copyright, litigation, regulatory, anti-counterfeiting, plant varieties, domain names, digital rights, and internet-related matters, and the firm has been responsible for precedent-setting decisions in patents, copyrights, and trademarks. Our firm is committed to developing the strongest group of legal professionals to manage the level of complexity and interdisciplinary orientation that clients require. During the first decade of the 21st century, the team successfully led efforts to reshape IP laws and change regulatory authorizations procedures in Mexico, not only through thought leadership and lobbying efforts, but the firm has also won several landmark and precedent-setting cases at the Mexican Federal and Supreme Courts levels, including in constitutional matters.
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