Legal standing in trademark non-use cancellation actions in Mexico
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Legal standing in trademark non-use cancellation actions in Mexico

Sponsored by


Jaime Rodríguez of Olivares explains the implications of the revocation by the Mexican Federal Court of Administrative Affairs of the criteria commonly used to allow complainants to credit their legal standing on trademark non-use cancellation proceedings

In recent years, the Mexican Patent and Trademark Office (IMPI) has allowed complainants to credit their legal standing on trademark non-use cancellation proceedings through the existence of a trademark application without the need to initially demonstrate that the application’s registration was blocked in view of the prior existence of third parties’ confusingly similar registered marks. This was provided that the official action citing the conflicting registration as a pertinent barrier was submitted as subsequent evidence in the proceedings.

Accordingly, it became common practice to file non-use cancellation actions and submit as evidence a certified copy of the trademark application. This served 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 proceedings.

Nonetheless, such criteria adopted by IMPI were revoked by the Federal Court of Administrative Affairs and by federal circuit courts, which sustained that legal standing must be credited initially along with the complaint. Furthermore, it would not be possible to do it at a later stage by submitting the evidence attesting that IMPI rejected the registration of the complainant’s trademark application on the ground of likelihood of confusion because of the existence of the 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 be borne when a formal objection is raised by IMPI communicating to the applicant the existence of a citation based on the likelihood of confusion.

Therefore, IMPI is starting to analyse and resolve non-use cancellation actions following the court’s legal reasonings stating that legal standing must be credited initially along with the complaint, and complainants cannot 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.

more from across site and ros bottom lb

More from across our site

Sources debate the implications of an opinion by Delaware’s chief judge Colm Connolly that lambasted the NPE IP Edge
Five partners reveal how delays in examining trademark applications are affecting their advice to clients and how they pitch new work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Partners at Quinn Emanuel explain how walkie-talkie and real-estate analogies helped them win over a jury at the Eastern District of Texas
The heads of Malaysian firm HHQ’s new technology practice group say they can be frontline advisers on the intersection between AI, blockchain, and IP
Darren Jiron, Finnegan’s managing partner in London, discusses the firm’s growth plans and misconceptions about US firm culture
The EMEA region research cycle has commenced - do not miss this opportunity to nominate your work from 2023!
A former partner at Stroock & Stroock & Lavan, which voted to dissolve in October, has joined McCarter & English
As ChatGPT celebrates its first birthday, we are still grappling with a multitude of IP concerns
Sources say an official role at an IP industry body is great for generating business leads, but that shouldn’t be the only motivation behind taking on the responsibility