A problem that impacts day to day in our country, and specifically the owners of trademarks, is the deficient or lack of regulation in our legislation regarding what is and what should be understood by "use of a trademark", "use of a trademark in accordance with the customs and habits" and "effective use v token use".
Although in the Inventions and Trademarks Law of 1975 was established a legal definition of effective use of a trademark, nowadays, the current Intellectual Property Law (IPL) does not define what should be understood by use of a trademark nor effective use. In fact, this provision was left in the IPL Regulation, in article 62, which ambiguously states that a trademark is in use "when the products or services distinguished by said trademark have been offered in the market or are available in the market in the quantity and manners that corresponds to the customs and habits in the commerce". However, it was never delimited what "quantity and manners that corresponds to the customs and habits in the commerce" meant.
The foregoing has meant that, more than 20 years after the entry into force of the IPL and its Regulations, there is no uniform criteria of what "use of a trademark" is and, therefore, the "token use" of a trademark is sufficient for the preservation of a registration in our country, since it is up to the judges to determine the customs and habits in each case.
In fact, it is surprising that in Mexico it has not been possible yet to define a criterion of "use of a trademark" and the required evidence to prove it in today's globalised world, especially since not only the international treaties (of which Mexico is a part) require "effective use" of a trademark for the preservation of a registration, but also since all problems regarding "effective use" v "token use" of a trademark have been solved in most parts of the world, achieving a standardised criterion in favour of good faith merchants and sanctioning in all time the symbolic or token use, whose only purpose is the illegal preservation of a registration.
Consequently, it is very important to establish a criterion of real and effective use of a trademark in our country, in order to be consistent with the international jurisprudence related to trademark law.
And for this, it is necessary that the judges harmoniously interpret the provisions of the IPL and its Regulation, as well as the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property, so that the obligation imposed to the owners to use their trademarks, for the purpose of preserving the registration, be understood as an effective use in accordance with the customs and habits in the commerce.
In other words, the use should necessary imply a real presence of the products or services in the market. And in order to prove such use, the judges must take into consideration, in each case, the following factors:
- Public and external use
- Real presence in the market
- Commercialisation to real consumers (non-related to the owner)
- Commercialisation in accordance with the nature of the products or services
- Appropriate amount
- Company size
The above will be the first step to end the illegal preservation of registrations through the symbolic, sporadic, internal and token use of a trademark, and finally provide legal certainty to all applicants and trademark owners in Mexico.
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