Discussion in Mexico about the deadline to file non-use cancellation actions against anticipations cited in the trademark registration process.

January 29, 2024

The Federal Law for the Protection of Industrial Property (FLPPI) grants every applicant for a trademark registration a term of 4 months to “express what is convenient for their rights regarding the requirements, oppositions, or impediments” cited by the Mexican Trademark Office (IMPI) during the examination of each trademark application.

However, IMPI has interpreted this rule to mean that any legal action(s) that the applicant intends to file against the anticipation(s) cited by IMPI, must be filed within this 4-month term; otherwise, IMPI is resolving unfavorably the invalidity or cancellation actions filed outside that period, sustaining lack of legal standing of applicant.

Contrary to IMPI, a Collegiate Circuit Court has ruled this interpretation to be illegal, at least concerning non-use cancellation actions, since the FLPPI does not establish a deadline to initiate this contentious procedure. Therefore, it can be initiated at any time, provided that applicant proves its legal standing in accordance with previous jurisprudence, which establishes that in non-use cancellation actions, legal standing is demonstrated by filing a trademark application, to which IMPI issues an office action citing the senior registration to be challenged.

This would force IMPI to study and resolve the non-use cancellation action, even if it was filed outside the 4-month term, as it is only for the applicant to express what is convenient for its rights.

This is only an isolated precedent and there are arguments that may apply to both sides. IMPI argues that not constraining the applicant to file the legal action(s) it intends to file against the registration(s) cited as anticipation(s) generates legal uncertainty, while trademark applicants argue that their human right of access to justice is being affected by constraining them to file legal actions within a term not expressly established by law.

Additionally, it is known that the draft Regulations for the FLPPI that IMPI intends to enact this year 2024, already include an express rule stating that any legal action to be filed by the applicant, against any anticipation cited by IMPI, must be done within this four-months term. Therefore, IMPI will not easily accept this isolated precedent.

Consequently, we consider it advisable for trademark applicants to adhere to the 4-months term; otherwise, their legal action(s) will likely be resolved unfavorably by IMPI, leading to the need to challenge those rulings, thus causing unnecessary litigation.

At OLIVARES, we remain vigilant about how judicial precedents evolve on this issue, as well as regarding the promulgation of the Regulations for the FLPPI, and we will keep our clients informed in a timely fashion.