Mexican Supreme Court rules on the constitutionality of article 151 of the former Industrial Property Law

On January 29, 2024, the Plenary of the Mexican Supreme Court approved by 6 votes (4 against, plus an absence) the project of Minister Esquivel in the review of the direct amparo 962/2021. The Court ruled that article 151, section I, last paragraph, of the former Industrial Property Law (IPL) is constitutional, as per the considerations mentioned below, among others. Due to its origin, this is a relevant precedent in the subject- matter.

The appellant argued that the non-applicability of the statute of limitations to request the nullity of a trademark registration granted in violation of the provisions of the law, violates legal certainty under article 16 of the Federal Constitution. Likewise, it considers inappropriate the broadness that represents that “any contravention to the law” may result in nullity, since the types of legal contraventions should be differentiated according to their seriousness. It also argues that the comparison with the term established in Section II of the same article (i.e. 3 years) makes it evident that Section I is exorbitant and disproportionate.

Although the Second Chamber (cfr. Thesis 2a. VII/2021) had considered that the non-applicability of the statute of limitation in question indeed violated the guarantee of legal certainty, now the Plenary analyzed the issue and declared the constitutionality of the provision, since:

• The essential content of the principle of legal certainty “lies in ‘knowing what to abide by’, with respect to the normative regulation provided by law and the actions of the authority”. The fact that the provision in question does not exhaustively list the cases that would result in the nullity of a registration does not imply leaving it to the free will of the authority to establish in which cases such consequence is applicable, “the validity of a registration shall only be questioned in case a frontal violation of a legal provision is alleged”.
• Likewise, the Plenary determines the validity of the non-applicability of the statute of limitation of the nullity action, which is based on a trademark registration granted illegally, since the mere passage of time cannot cure its illegality.
• To maintain that the legislator should foresee all possible contraventions that would give rise to the nullity of a trademark registration would affect the dynamism of the trademark law recognized by the legislator in the process that gave rise to the IPL. The legislator back then considered that it is necessary to “permanently update the legal framework of industrial property to establish clear rules that facilitate the international flows of trade, investment and technology”.

In view of the foregoing considerations, the Plenary of the Mexican Supreme Court upheld, on the point of constitutionality, the judgment appealed.

________

TMT & IP Area at ECIJA Mexico

socios.mexico@ecija.com

+52 55 5662 6840

www.ecija.com