MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
Partial cancellations are available for trade mark registrations. IMPI can eliminate products or ser - vices for which the trade mark holder failed to prove use or where those products and services overlap with those covered by a prior registered trade mark or by a trade mark that claims a prior use and was filed earlier. However, according to recent criteria issued by IMPI, partial cancella - tions are only applicable to trade marks filed on or after 5 November 2020. This is the date when the FLPIP entered into force, establishing regula - tions for such actions. Additionally, the interested party must explic - itly request a partial cancellation. If this is not indicated, the procedure will continue as if the cancellation action had been requested for the entire registration. For copyright registrations, there are no partial cancellations. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Please refer to 3.9 Refusal of Registration and 5.2 Legal Grounds for Filing an Opposition or Cancellation for discussion of the appeal pro - cess against any decision issued by IMPI. 5.6 Amendment in Revocation/ Cancellation Proceedings It is possible to amend a trade mark registration during a revocation/cancellation proceeding in order to resolve the dispute and reach an agree - ment beneficial to both parties. In practice, it is common to initiate settlement talks during revocation/cancellation actions. One common approach is to limit the scope of goods or services covered by the trade mark registration. This allows the plaintiff, whose goal is to invalidate the trade mark to facilitate its own
registration, to withdraw the action, enabling both trade marks to coexist without covering related or identical products or services. 5.7 Combining Revocation/Cancellation and Infringement In some cases, if both revocation and cancel - lation affect the same trade mark registration, IMPI may resolve them simultaneously in a sin - gle decision. However, if there is an infringement action and the defendant files a cancellation action as a counterclaim, IMPI will first resolve the invalida - tion action, followed by the infringement case. The outcome of the invalidation action could sig - nificantly impact the result of the infringement case. 5.8 Measures to Address Fraud There are no special procedures designed to revoke or cancel trade marks or copyrights filed fraudulently. However, there is a cancellation action based on bad faith, which can be used in cases where fraudulent intent is suspected. This action, though, follows the standard cancellation pro - cedure and is not a special or separate process. The only criminal offences related to trade marks concern counterfeiting. Therefore, if an applica - tion is filed in bad faith, no investigation will take place, and as such, the application will not be suspended during any investigation process. The consequences of a fraudulently filed appli - cation are purely administrative and include the cancellation of the fraudulent trade mark or cop - yright registration.
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