Effective use of a trade mark

by Martha Celis

The trade mark system in Mexico faces several problems because there are numerous trade mark registrations in the Registry that were granted to identify a lot of products and/or services within one class. In commercial practice these trade marks are not used to identify each and every product and/or service protected, but only to identify one or some of them. The issue is that often it is not possible to achieve a trade mark registration in a particular class since there is a senior trade mark registration for almost all the products or services of a particular class, although in fact, the senior trade mark registration blocking the junior trade mark application is not used to identify all the products and/or services that it covers and in some cases the trade mark is not even in use with respect to those that could trigger the obstacle for being the ones that the junior application is seeking to protect. The origin of the problem lies in the possibility the Mexican trade mark system provides for achieving protection without actually using the trade mark for all the products/services of one class. Furthermore, the use of the trade mark in one of the products/services covered is enough to maintain the registration when challenged on non-use basis or for renewal purposes, since partial cancellations of a registration in the sense of narrowing the scope of protection of a registration are not provided. Therefore, during the prosecution of a trade mark application, the examiner will only take into account that the senior trade mark registration was granted to identify several products or services which overlap with the ones intended to be protected. He/she will not consider any fact that the applicant could provide at this stage in regard to the actual use of the senior registration. There is also no sense in seeking the cancellation of that registration on the basis of nonuse in litigation since the use of the trade mark for a single product will be enough to keep the registration with the scope originally allowed. In other words, the effective use of a trade mark is not taken into consideration when analysing the likelihood of confusion, but only the way in which it was registered. Actually, even when the parties involved reach a coexistence agreement showing that the coexistence of their trade marks in the market will not lead consumers into confusion due to the fact that they will not share the same commercialisation or distribution channels, the authority is still reluctant to grant a junior trade mark registration upon a letter or consent or coexistence agreement on the basis that the senior trade mark registration is covering coincident products or services. Only consent letters including mutual restriction of the goods/services that are to be covered by parties are allowed and even then not in all the cases. It is clear that the solution to the problem at the most basic level is to require use to be shown to get a registration. But this solution is not feasible, not only because it is impossible for the Trade Mark Office to corroborate actual use for any trade mark application, but because this would imply another problem: what to do with the registrations already granted? The most feasible solution is therefore to amend the Mexican Law to implement a partial trade mark non-use cancellation proceedings, given that in the real market there are many registered trade marks that are used to identify only a particular product or service and therefore they should not pose an obstacle to achieving a registration. The main goal of limiting the scope of protection of a trade mark registration to meet its actual use in the market is to create a functional and dynamic system that allows the opportunity for new trade marks to be protected.