Trademark oppositions come to Mexico
A recent amendment will make costly annulments a thing of the past.
Gilberto Sanchez, partner at SPECyF, explains
An amendment to the Industrial Property Law was published in the Official Gazette on 1 June that essentially established a trademark opposition system in Mexico.
Before, the trademark registration procedure was comprised of: an examination of the form, including a review of the formalities and/or classification in the registry application; and a contents examination, specifically a review of the registration capacity of the distinctive signs (Articles 4, 89 and 90 of the Industrial Property Law).
Once the form examination was completed and approved, the Mexican Institute of Industrial Property (IMPI) would review the registration capacity of the proposed sign and grant or refuse the trademark registration.
Finally, the trademark registration would be published in the the Industrial Property Gazette.
However, following the 1 June amendment, holders of trademark registrations and the public in general may announce their opposition to any trademark registration that is in process. With the implementation of the opposition system in Mexico, the procedure will change beyond what was described above.
Once a trademark application form has been submitted, the IMPI will publish the application in the Industrial Property Gazette within 10 working days, so that third parties are aware and any can demonstrate their opposition to the registration of the proposed sign ahead of its examination.
The term to submit any opposition is one month from the publication of the trademark application in the Industrial Property Gazette. It should be noted that the IMPI may or may not take into account the opposition of third parties and these shall not be considered as such, neither as parties nor as interested parties, and the procedure of the trademark registration will not be suspended.
Furthermore, any opposition proceeding filed will not prejudge on the result of the contents examination made later by the IMPI.
Once the period of one month to submit any opposition has elapsed, the IMPI, within the following 10 working days, will publish any opposition requests in the Industrial Property Gazette.
The trademark applicant, subject to opposition, may pronounce and state what its right corresponds to, in connection with the causes, impediments or previous uses cited in the opposition, within one month.
The opposition and disclosures of the applicant may be considered by the IMPI during the application contents examination.
Finally, the IMPI shall communicate to the application opponent, in writing, the information of the title or certificate issued, or the resolution denying the registration, as the case may be.
If the opposition or disclosures of the applicant are filed by an agent or attorney, it shall suffice for the attorney to state under oath that he or she has the power to file the opposition or disclosures.
In summary, the opposition system will allow any holder of trademarks and the public in general to clarify before the IMPI that any sign submitted to trademark registration may affect their interests or the interests of the public in general.
With this amendment, it is possible to prevent trademark registrations that later may be the subject of annulment. Therefore, costly suits that can last up to five years may be avoided.