Regulations of the Mexican Industrial Property Law (“MIPL”) consider that a mark has been used “when the goods or services have been placed or are available on the market, in the amounts and manner that correspond to the custom and practice in trade.”
CLAIMING THE DATE OF FIRST USE
Submitting evidence of the date of first use when a trademark application is filed is not necessarily required. However, such evidence should be available if the application matures into a registration, and if it is challenged by a third party for false statement.
What the Law considers as use of a mark is different from what is considered as the “date of first use”
In general, for the purpose of registering this date, it is sufficient to have a single invoice reflecting the sale of one product or, in the case of services, that one customer received the covered service for a single transaction.
In both cases invoices should contain the following information:
- The date of the transaction
- The full name of the seller of the product, or the provider of the service
- The description of the product or service
- The mark that distinguishes the product or the service
- The tax identification of the seller
- The full address of the store where the product is sold or the service is provided
Advertisement or promotional material may be useful if it reflects the following:
- The date when the advertisement was published
- That the products or services were available to the consumer on that date
- Those responsible for advertisement
- The description of the goods or services and the trademark.
If a well-know newspaper or publication announces the opening of a store in Mexico, mentioning the trademark, the owner of the business, the date of the opening of the store, and other similar information can be useful as well, in order to claim date of first use.
The deliverance of a sample product for tasting purposes is not considered use of a trademark, until an effective sell in commerce has taken place.
USE BY LICENSEES
The trademark use made by licensees or distributors is equivalent to the use by the trademark owner - as long as the license is recorded with the MPTO.
In case of related companies, our Federal Courts state that use by a company owned or controlled by the registrant is equivalent to use by the registrant pursuant to Article 19.2 of the TRIPS Agreement and Article 1708.9 of NAFTA.
The use made by the Licensee for the first time may accustom to the benefit of the owner of the trademarks, if a license exists and it is duly recorded in the MPTO.
RENEWAL OF REGISTERED MARKS
Trademarks may be renewed every ten (10) years and it is not necessary to submit evidence of use for this purpose.
NON-USE AS A CAUSE FOR CANCELLATION
If a trademark is not used for three (3) consecutive years, any third party with legal interest may request for the cancellation of such registered mark unless the owner demonstrates that he has used it on any of the listed goods or services during the preceding three years.
Mexican IP Law does not require the regular filing of affidavits of use. However, the submission of such affidavits is recommendable every three (3) years to discourage cancellation claims.
Note: For applications filed after August 10, 2018 affidavit of use submission will be mandatory after three years of being granted and, if no use is demonstrated after this period the registration will be considered null and void.
Proofs of use of a trademark should be carefully reviewed on a case by case basis to determine whether it can be beneficial to claim date of first use and/or to demonstrate continuous and uninterrupted use of a mark.
Otherwise, the registration will be vulnerable to cancellation actions for (a) false statement of the date of its first use; or (b) non-use during the preceding three (3) consecutive years.
IPLES-Intellectual Property Legal Services Mexico