CONFLICT OF CRITERIA 187/2021: RELATING TO THE UNCONSTITUTIONALITY OF SECTION I OF ARTICLE 151 OF THE INDUSTRIAL PROPERTY LAW.

Mexico City, August 16th, 2022.

On August 4, 2022, the Supreme Court of Mexico analyzed the conflict of criteria 187/2021, raised between the criteria of the First and Second Chambers of the Supreme Court regarding the unconstitutionality of section I of the article 151 of the (repealed) Industrial Property Law.

The aforementioned section established that the registration of a trademark will be null when it was granted against the provisions of the Industrial Property Law or the law that had been in force at the time of its registration. Likewise, it provided that the nullity provided in such section could be prosecuted at any time.

The argument on the unconstitutionality of section I of article 151 of the Industrial Property Law consisted in determining if a cause for the nullity of a trademark registration that does not clearly and precisely indicate all the elements of its hypothesis violated the principles of legality and legal certainty. Likewise, the unconstitutionality of the section was argued in connection to the possibility of exercising the nullity action at any time, namely, the lack of a statute of limitations.

The First Chamber, in cases 2471/2011 and 4872/2015, had decided that section I of article 151 of the Industrial Property Law cannot be considered unconstitutional and that the rule does not violate the principles of legality and legal certainty, since the legislature cannot foresee all the possible scenarios that could lead to declaring the nullity of a trademark registration, so it is possible for the legislature to have contemplated an open-ended rule, without this allowing for abuse of discretion by the authority for deciding on the nullity of a trademark; since by binding the challenged  section to other provisions of the same law, or the one that would have been in force at the time of registration, the authority must decide objectively on the specific nullity case due to violations of the same law.

For its part, the Second Chamber, in deciding the case 8247/2019, held that section I of article 151 of the Industrial Property Law is unconstitutional and violates the principle of legal certainty, since the governed will never have the certainty of ownership of the trademark registration, since it will always be conditioned in that for any violation of the law, someone may claim its nullity at any time, causing a permanent threat to the trademark exclusivity granted.

On August 4, 2022, the Supreme Court of Mexico decided that there is no contradiction between these two criteria. Even though both Chambers reached different conclusions regarding the constitutionality of section I of article 151 of the Industrial Property Law, the Supreme Court determined that there is no genuine point of contradiction, because the Chambers of the Supreme Court did not decide on the same legal issue. More specifically, the Second Chamber jointly examined section I and the last paragraph of article 151, while the First Chamber only considered the content of section I but not the last paragraph.

Consequently, the criteria issued by both Chambers, namely, the one that maintains the constitutionality of section I of article 151 of the Industrial Property Law, and the one that claims its unconstitutional remain persuasive for judges, but neither is binding.

Due to the foregoing, it is necessary to analyze in a timely manner and in each case the potential causes for nullity of a trademark registration due to violations of the provisions of the Law on the matter and seek advice from legal professionals. In Basham’s Intellectual Property litigation department, we have specialists who are ready to advise you on this and other issues related to your legal needs and interests, always seeking the best in terms of protection and benefits for our clients.