Partial Cancellations Under The New Mexican IP Law

• Published date: 08 January 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: OLIVARES
• Author: Santiago Pedroza and Diego Ballesteros Familiar

• On 5 November 2020 the Federal Law for the Protection of Industrial Property came into force, repealing the former Industrial Property Law
• The new law introduces the possibility to request the partial cancellation of a registration for the goods/services for which the mark is not in use
• This opens up new possibilities for applicants whose trademark applications were blocked by an existing registration

As part of the package of legal amendments associated with the US-Mexico-Canada Agreement (also known as T-MEC in Mexico), on 5 November 2020 the Federal Law for the Protection of Industrial Property came into force, repealing the former Industrial Property Law.

One of the most significant changes in relation to trademarks is undoubtedly the introduction of partial cancellations, a legal concept that was not regulated in Mexico prior to the entry into force of the new law, despite being recognised and widely exploited in several jurisdictions.

The previous Industrial Property Law did not allow for partial cancellations, as it only provided for the possibility to cancel trademark registrations through a contentious procedure where:

• the mark at issue had not been used for three consecutive years for any of the goods/services for which it was registered; or
• the registration had not been renewed in terms of the law.

Consequently, it was sufficient for trademark owners to prove use of their registered trademarks in non-use cancellation actions (or to declare use of the mark under oath at the time of renewal) in connection with a single good or service covered by the registration in order to avoid cancellation on the ground of non-use. This meant that the holder of a trademark registration covering multiple goods/services could prevent other users of the industrial property system from obtaining registrations, simply based on the fact that the registered trademark had been used in relation to one or some of the goods/services covered by the registration.

However, Article 235 of the new Federal Law for the Protection of Industrial Property establishes that, if a trademark has not been used for three...