The Federal Law for the Protection of Industrial Property will come into force on November 5, 2020, and it contains several changes that will have a direct impact on trademark registration invalidity actions. These changes are detailed as follows:

• Regarding invalidity causes of action based on prior use and prior existing registrations, partial invalidity actions are incorporated and regulated but only in connection with the goods and services covered by the trademark registration.

In these cases, it is established under the current IP law that if the Mexican Patent and Trademark Office (IMPI) issues a ruling declaring the partial invalidity of a trademark registration, a marginal record would be included in the registration certificate stating the modifications and the reasons for them.

Partial invalidity actions of trademark registrations are declared exclusively in connection with the products or services covered by the trademark registration and not over the elements conforming the marks, which would constitute an ungrounded sectioning, in violation of the basic likelihood of confusion analyses principles.

The new Law also regulates partial invalidity actions, providing additional legal certainty to trademark titleholders, who will not be facing the risk of suffering the loss of their trademark registrations in their entirety for the mere coincidence or similarity in one of the goods or services covered by the registrations.

• The invalidity cause of action based on false data was completely modified to only sanction the lack of veracity in the declaration of the date of first use contained in the trademark application, and it is expressly indicated that the burden of proof is reverted to the defendant.

This is a significant change because the current invalidity cause of action based on false data is too broad, since it does not specify the basis upon which a trademark registration could be invalidated. Case Law has narrowed the scope of protection by stating that the invalidation of a trademark registration could only be declared if the statements could fall within the genre of information considered as essential to trademark applications.

The date of fist use should be considered as the only essential date having substantial legal implications on trademark applications in regards to the date to overcome an invalidity action based on prior use or on a defense based on prior use in connection with an infringement action. Limiting the scope of protection of the referred invalidity cause of action should be considered necessary.

Additionally, it is also significant that the burden of proof concerning the veracity of the date of first use is reverted to the defendant, since recent case law mistakenly concluded that the burden of proof corresponds to the complainant, resulting in the current invalidity causes of action being effectively useless or meaningless.