Mexico IP Caselaw | Trademark Nullity Actions – Burden of Proof
If the plaintiff in a trademark nullity action satisfies the burden of production of evidence when claiming falsehood of a trademark date of first use, the burden of proof reverses. The onus is, then, on the trademark registrant to produce evidence of the truthfulness of the date of first use claimed at the time of filing the corresponding application.
On January 20, and within an amparo action filed by Café Cumbre, S.A. de C.V. where it also analyzed due process and good faith presumption implications associated with trademark registrations and nullity actions thereof, a district court in Mexico reviewed the applicable rules when seeking the annulment of a trademark registration, based on the falsehood of facts upon which the subject registration was granted, namely the date of first use. The court not only ruled that the burden of proof reverses to the registrant when the plaintiff produces evidence supporting its claim of falsehood, but also that there is no legal restriction preventing plaintiffs from relying upon evidence produced by the registrant in a different case, provided it is pertinent to the case at hand.
The court also made it clear that, where the annulment of a trademark registration is sought based on the falsehood of the date of first use, the plaintiff has the onus of producing evidence showing such falsehood, since the Mexican Industrial Property Law does not require that an applicant proves the date of first use, and only requires a good faith declaration of such date which is presumed to be true.
