Trademark Registration Partial Non-use Cancellation Actions

August 20, 2020

An analysis of the new Federal Law for the Protection of Industrial Property, which will come into force on November 5, 2020, revealed that one of the most significant amendments in this new law is the introduction of partial non-use cancellation actions. With this new modality of non-use cancellations, the Mexican Institute of Industrial Property (IMPI) will be empowered to declare the cancellation of the registration, either in its entirety, or in connection with specific products or services that are not in use.

The foregoing implies that, unlike the former law (which allowed keeping a registration if the use of the trademark was proved in connection with any of the products or services it covered), with this new law, it will be necessary to prove the use of the trademark in connection with all the products or services covered by the registration. Otherwise, IMPI could declare the partial cancellation of the registration in regard to those products or services whose use is not proven.

This new application of non-use cancellations will have a positive impact on the legal system in Mexico, since it was very common to file trademark applications covering the “heading” of an entire class, even when the trademark was not aimed to be used to identify all those products or services, a situation that generated a multiplicity of obsolete registrations that blocked the possibilities of choosing a trademark for those who were interested in using it effectively.

Being able to declare the partial cancellation of a trademark registration in connection to those specific products or services that are not in use, a public service will be fulfilled, and IMPI’s Trademark Record will be cleaned up, allowing it to be a faithful reflection of the trademarks that are effectively used in the Mexican market.

Now, if a trademark registration is partially cancelled on the grounds of non-use, it is understood that a marginal annotation must be established in the Certificate of Registration, in which the modifications to it shall be stated, as well as the reasons that caused such modifications. Although there is no express provision in this regard in the new articles on partial non-use cancellation actions, this was established in the new provisions on partial invalidity actions, so it would be expected that IMPI eventually clarifies that this provision also applies in relation with partial cancellations.

Finally, pursuant to the transitional articles of the New IP Law, this new partial cancellation can only be brought against the registrations that were applied for and granted (or renewed) under the New IP Law.