IMPI imposes time limits on cancellation actions

The Mexican Institute of Industrial Property (IMPI) has issued a series of decisions that impose time limits on cancellation actions.

IMPI dismissed cancellation actions that were based on both Article 151(I) and Article 90(XVI) of the Industrial Property Law. Article 151(I) reads as follows:

"The registration of a mark shall be cancelled where:

(I) It was granted in violation of the provisions of this law or of that in force at the time of registration.

Notwithstanding the provisions of this subparagraph, an invalidation action may not be based on a challenge to the legal representation of the applicant for the registration of the mark."

Article 90(XVI) provides as follows:

"The following may not be registered as a trademark:

(XVI) A mark that is identical or confusingly similar to another mark in respect of which an application has been filed and is awaiting registration, or to another mark that is already registered and in force, and covers the same or similar products or services. However, a mark that is identical to an earlier registered trademark may be registered if the application is filed by the owner of the earlier mark for use in connection with similar products or services."

IMPI held that an action for the cancellation of a registered trademark that is confusingly similar to another registered mark must be based on Article 151(IV) of the law. Article 151(IV) reads as follows:

"The registration of a mark shall be cancelled where:

(IV) The registration was granted in error, by mistake or owing to a difference of judgment, as it infriges an earlier registration for an identical or confusingly similar mark for identical or similar services or products."

In so holding, IMPI not only adopted a narrow interpretation of Article 151, but also imposed a time limit of five years to bring a cancellation action against a confusingly similar registered trademark, as the last paragraph of Article 151 reads as follows:

"Cancellation proceedings under this article may be initiated within a period of five years from the date of publication of the registration in the Gazette, with the exception of actions under Subparagraphs I and V, which may be initiated at any time, and under Subparagraph II, which may be initiated within a period of three years."

IMPI based its decisions on the following arguments:

Allowing a cancellation action based on both Article 151(I) and Article 90(XVI) would constitute an abuse of rights. A statute of limitations must be established in order to avoid such abuse.
The specific rule (Article 151(IV)) prevails over the general rule (Article 151(I)).

IMPI's decisions are pending appeal before the Mexican federal courts. The interpretation of the courts is awaited with great interest.

Roberto Arochi, Arochi Marroquín & Lindner SC, Mexico City

IMPI imposes time limits on cancellation actions

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