Supreme Court set to rule on non-use conflict

By the second quarter of 2003, the Mexican Supreme Court is expected to settle an important split among the federal circuit courts regarding trademark non-use. The Supreme Court will decide whether the statutory three-year period of non-use needed to cancel a mark begins when the trademark owner stops using the mark or when the Institute of Industrial Property (IIP) issues a resolution for non-use.

The two cases that caused the split at circuit court level were both entitled Nintendo v Von Haucke (Cases R A 2157/2001 and R A 2784/2001). (There were two cases because Von Haucke sued Nintendo along with two retailers separately). Nintendo owns the international trademark GAME BOY for a pocket-sized games console, but Von Haucke is the registered owner of the GAME BOY mark in Mexico. When, in 1999, Von Haucke brought trademark infringement proceedings before the IIP against Nintendo for its use of GAME BOY in Mexico, Nintendo counterclaimed for cancellation of Von Haucke's mark on the grounds that Von Haucke had not used it since 1995. The IIP agreed with Nintendo, finding that Von Haucke was not using the mark, issued a resolution for non-use and dismissed the infringement proceedings. Von Haucke then appealed.

The district courts in both cases granted Von Haucke protection. They found that the three-year period of non-use needed to cancel a trademark registration - provided for in Article 130 and 150 of the Industrial Property Law - begins when the IIP issues a resolution for non-use, not on the date the owner stops using the mark. This time Nintendo appealed.

In one case, the Seventh Circuit Court of Appeal affirmed the district court's decision, but in the other, the Fourth Circuit allowed Nintendo's appeal and found that non-use began when the owner stopped using the mark.

The Supreme Court's interpretation of the Industrial Property Law is eagerly awaited. Should Von Haucke's GAME BOY have been cancelled in 1999 based on non-use since 1995, or did the period of non-use only begin in 1999 with the IIP's resolution for non-use?

Roberto Arochi, Arochi Marroquín & Lindner, Mexico City