Information technology and proving trade mark use

In some countries, in order to obtain a trade mark registration it is necessary to prove the previous use of the trade mark. On the contrary, according to Mexican Industrial Property Law, any person may request before the Mexican Patent and Trademark Office the registration of a trade mark, regardless if they have used the mark previously or not.

We consider that this regulation has important benefits such as stopping industrialists, traders or service providers from using a trade mark that (i) may not mature into a trade mark registration according to Mexican Industrial Property Law provisions or that (ii) may infringe third parties' industrial property rights, among others. However, this regulation may also cause the unjustified ownership of trade mark registrations in hands of people that do not intend to use the trade mark to protect the goods or services in the commerce.

In order to avoid this kind of unfair competition practice and to allow trade marks to be available for people who will really use trade mark registrations according to its nature and purpose, Mexican Industrial Property Law requires trade mark registration owners to use their trade marks after the three first years from the date on which they were granted.

Mexican Industrial Property Law not only allows people to request trade mark registrations on a non-prior use basis but also grants trade mark owners a three-year grace period to use the trade mark on any of the goods or services that it protects

That is, Mexican Industrial Property Law not only allows people to request trade mark registrations on a non-prior use basis but also grants trade mark owners a three-year grace period to use the trade mark on any of the goods or services that it protects. After this period, trade mark registrations may be subject of a cancellation action on grounds of lack of use.

According to article 152, Section II, of Mexican Industrial Property Law, a registration shall lapse "when the mark ceases to be used during the three consecutive years immediately prior to the request for an administrative declaration of lapse, except where there are reasons for the non-use that are justified in the opinion of the Institute".

In this regard, article 130 of cited Mexican Industrial Property Law cites an example of a justified exception for the non-use of a trade mark, which is the existence of a situation that is beyond the control of the owner of the mark that constitutes an obstacle to the use thereof, such as the restriction of imports or other government requirements applicable to the goods or services to which the mark is applied.

Furthermore, in terms of article 62 of the Regulations of Mexican Industrial Property Law, for purposes of above-mentioned articles 130 and 152, Section II, it shall be deemed that a trade mark is in use, among other scenarios, when the goods or services to which it is applied are available in the national market on the quantity and amount that correspond to the proper practice and custom in the commerce; as well as when the goods are intended for exportation.

Based on the above, it is important to emphasise that in cancellation actions on grounds of lack of use everything reduces to prove if the trade mark registration subject to the administrative procedure was used during the three consecutive years immediately prior to the request for the administrative declaration of lapse.

In consequence, in our opinion it is critical to clarify the two following issues: (i) who has the burden of the proof to prove the use of the trade mark registration subject to the cancellation action, and (ii) which evidence is useful to prove the use of the referred trade mark.

Mexican Patent and Trademark Office criterion is that the burden of the proof to prove the use of a trade mark registration in a cancellation action belongs to the defendant; criterion that has been confirmed in several case laws solved by our Federal Courts.

These case laws explain that the burden of the proof relies on the defendant under the argument that it is precisely the defendant who has the necessary evidence to prove that subject trade mark is in use.

Moreover, our Federal Courts rulings are based on General Theory of the Process principle's which state that the plaintiff shall prove the facts that support its action and the defendant of its exceptions, but whoever denies a fact shall only prove its existence when the denial involves a specific statement of a fact.

So, in these procedures, since the plaintiff denies that the defendant used the mark during the three consecutive years immediately prior to the request for the administrative declaration of lapse, it is logical to conclude that such negative fact could not be proved by the plaintiff but, in the other hand, the defendant could easily prove that he has used the trade mark subject to the cancellation action during the three consecutive years immediately prior to the request for the administrative declaration of lapse.

Once that we have explained that the defendant has the burden of the proof to prove the use of a trade mark, it is necessary to analyse what evidence is useful to prove such trade mark use in a cancellation procedure.

In this regard, it is important to remark that article 192 of Mexican Industrial Property Law states that "all types of evidence shall be allowed in the administrative declaration procedures, with the exception of testimonials and personal statements, unless the testimonial or personal statement is in documentary form, and evidence that is contrary to morality and the law." Moreover, the cited article continues stating that evidentiary value shall be accorded to invoices issued and inventories drawn up by the owner or his licensee.

As seen, Mexican Industrial Property Law highlights the importance of invoices and inventories to prove the use of a trade mark.

Information technology should be considered as a very useful tool for companies and attorneys to prove the use of a trade mark in cancellations actions on grounds of lack of use before the Mexican Patent and Trademark Office

In this sense, Federal Courts had traditionally considered that invoices have full probative value to prove the use of a trade mark. In the opinion of Federal Courts, the above-referred article 192 Mexican Industrial Property Law interpretation was that due to invoices particular nature and purpose, they had full probative value to prove the use of a trade mark and that such documents per se were enough evidence to prove trade mark use.

In consequence, trade mark cancellation actions on ground of lack of use were administrative procedures in which basically the only suitable evidence to prove the use of a trade mark was invoices issued by the defendant from which the use of the trade mark subject to cancellation could be noticed. However, a recent Court ruling (Jurisprudence number 2010815, issued by the First Circuit Administrative Plenum, published on the Weekly Federal Judicial Report, Book 26, Volume III, January 2016, page 2502, Tenth Epoch) has changed this criterion and diminished invoices' probative value to prove the use of a trade mark in cancellation actions of grounds of lack of use.

According to this new criterion, invoices are private documents that still are useful to evidence the use of a trade mark in cancellation actions on grounds of lack of use; however, these documents have no longer full probative value. That is, regardless that invoices are the appropriate evidence to prove the use of a trade mark, its intrinsic and particular content shall be considered in each particular case in order to determine its probative value.

Therefore, according to this new binding jurisprudence, when invoices offered as evidence in cancellation actions on grounds of lack of use are objected, the certainty of its content shall be proved with other evidence because the mere refutation of these invoices make them insufficient to prove the use of the trade mark.

So, basically, according to this new decision, in the event that an invoice offered to prove the use of a trade mark is objected, it shall not have a full probative value and will only be considered as an indication of the use of the trade mark; so, other kind of evidence shall be exhibited in order to prove the use of such trade mark.

As a result, we can conclude that cancellation procedures on grounds of lack of use have become more complex and we, as attorneys, need to think on new ways to prove the use of our client's trade marks.

We consider that information technology is a very important and useful tool to prove trade mark use in cancellation procedures on grounds of lack of use, especially if we consider the marketing and commercial strategy transformation that has occurred in the last years by the companies' increasing tendency to advertise their trade marks on social networks, blogs, Internet, mobile applications, etc.

Let's recall that in order to prove the use of a trade mark to avoid it lapsing, Mexican Industrial Property Law requires the defendant to prove: (i) the use of the trade mark for the products or services for which it was registered; (ii) that the use of the trade mark corresponds to anytime during the three consecutive years immediately prior to the filing of the request for the administrative declaration of lapse; (ii) that the use of the trade mark can be attributed to the owner of the trade mark.

It is our conviction that information technology often allows us to prove the three above-referred requirements provided by the Mexican Industrial Property Law, especially that which refers to the date in which the trade mark was used; but special caution need to be paid on the way in which it will be proved that the use of the trade mark can be attributed to the owner of the trade mark or its licensee.

So, in consequence, in our opinion information technology should be considered as a very useful tool for companies and attorneys to prove the use of a trade mark in cancellations actions on grounds of lack of use before the Mexican Patent and Trademark Office; all the more since according to applicable Mexican law and several Court rulings, the information produced or available on electronic or optical media, or any other technology shall be admitted as evidence.

However, special attention and analysis may be required in order to determine how the information technology evidence will be offered before the Mexican Patent and Trademark Office.

There are a number of different ways in which this kind of evidence can be offered before the Mexican Patent and Trademark Office, whether the evidence is offered as a well-known fact; the content of the Information Technology evidence is printed and offered as a document; a notarial certification is given on the content of the Information Technology evidence; a visual inspection of the information technology evidence; or even a computer's or informatics' expert opinion.

And the decision on how this evidence will be offered before the Mexican Patent and Trademark Office must, in our opinion, depend on several factors, such as the nature of the evidence, the particularities of each cancellation action, the amount and different kinds of evidence available to prove the trade mark use, among others.

Enrique Romano Barragán
		Enrique Romano is a lawyer at Abogado en Goodrich, Riquelme y Asociados. He specialises in intellectual property, constitutional law, regulatory law, human rights and juicio de amparo litigation. He has broad experience on litigation matters against Cofepris due to the unlawful granting of marketing authorizations that violate IP rights and human right to health. He has an LLB from the Escuela Libre de Derecho, Mexico City (2012) and a Master Degree on Sanitary Law and Bioethics from the Universidad de Castilla-La Mancha, Spain (2015).