Following our analysis of the new Federal Law for Proteñction of the Industrial Property, same that will come into force on November 5, 2020, we observe 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 covered by it), 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, the authority could declare the partial cancellation of the registration in regard to those whose use is not proven.
This new modality of non-use cancellations will have a positive impact in our legal system, since it was very common to file trademark applications covering the "heading" of a whole class, even when the trademark was not aimed to be used to identify all those products or services, 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.
Therefore, by 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 order function will be fulfilled, by cleaning IMPI's Trademark Record, allowing it to be a faithful reflection of the trademarks that are effectively used in the Mexican market.
Now, in case 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 on 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 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 (and renewed) under the New IP Law
Originally published 20 August 2020.
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