By Marco Tena
In Mexico, trademarks represent a strategic asset for companies. However, obtaining registration is not enough to ensure protection. To maintain its validity, it is necessary to use the trademark as it was registered before the Mexican Institute of Industrial Property (IMPI). Failure to do so may lead a third party, with legitimate interest, to request the revocation of the trademark through an adversarial proceeding, in order to obtain rights incompatible with your trademark. In this article, we will explore why proper use of a trademark is crucial and how to avoid its vulnerability to a revocation request.
What does the use of a registered trademark mean?
The Federal Law for the Protection of Industrial Property (LFPPI) requires that registered trademarks be used in a manner faithful to their registration. The use must be real and effective, which means that it must be applied in commerce as it was registered, without significant alterations that modify its nature or the products and services it covers.
This use must be consistent and must be aligned with what is specified in the registration certificate. For example, if the registered mark includes a specific logo or certain colors, it is crucial that any commercial use of the mark respects these elements. Different use may result in a revocation action brought by a third party seeking to register a trademark incompatible with yours.
Consequences of incorrect use of a trademark
In the Mexican context, if a trademark is not used as registered for a period of three consecutive years, a third party may request its revocation. This procedure is adversarial, which means that it is initiated by an applicant with a legitimate interest, such as someone seeking to register a trademark that would be in conflict with yours if it remained in force. This third party could argue that the mark is not being used in accordance with the law and, therefore, should be removed from the register in order to obtain its own trademark right.
IMPI will conduct a proceeding in which the trademark owner has the opportunity to defend itself and prove that it has been using the mark in commerce continuously and in accordance with the original registration. If correct or justifiable use cannot be proven, the mark may be declared lapsed and removed from the register, which would leave the way open for the third party to obtain a right to an otherwise incompatible mark.
According to Article 256 of the LFPPI, any person with a legitimate interest may request the revocation of a trademark if it has not been used for a period of three consecutive years. This adversarial proceeding before the IMPI involves two parties: the applicant for revocation, who seeks to remove the registered trademark, and the trademark holder, who must defend its right by presenting evidence of actual and continuous use.
The applicant usually seeks to register a mark that is hindered by the existence of the registered mark in question. If revocation is declared, the applicant may proceed with its registration, consolidating its right incompatible with the revoked trademark.
It is essential that the trademark owner records and preserves evidence that demonstrates the continued use of the mark as registered. This includes advertising material, invoices, labels, and any other document that proves that the mark has been used publicly and in commerce within the period stipulated by law.
The law allows certain exceptions to avoid the revocation of a trademark, such as force majeure or legal impediments that justify non-use for a prolonged period of time. However, these causes must be presented and argued before the IMPI to avoid the declaration of revocation.
In addition, use of the mark may be made by third parties under a license agreement, provided that the authorized use is consistent with the original registration. It is important that any licensed use is properly documented and that IMPI is informed of the existence of such agreements.
To avoid leaving your trademark vulnerable to a revocation proceeding initiated by a third party with incompatible interests, it is crucial:
- Use the mark exactly as registered, respecting the key visual and design elements.
- Document and retain evidence of continued use in Mexican commerce, including advertising, contracts, and invoices.
- Monitor the use of your trademark to ensure that it remains consistent with the registration, and perform periodic audits of your industrial property assets.
- In case of facing a revocation proceeding, have a solid defense that includes irrefutable evidence of the correct use of the trademark.
Proper and continuous use of your trademark is the best defense against a revocation proceeding initiated by third parties. Although the initial registration grants you exclusive rights, these will only remain in force if the trademark is used properly and in accordance with the law. For more information on how to protect your trademarks in Mexico or if you are facing a revocation proceeding, do not hesitate to consult our legal team specialized in industrial property.
