9 August 2016Jurisdiction reportsVictor Adames

Mexico: Pros and cons of the new opposition system

After several years of discussions, the Mexican Congress has approved a decree amending the Industrial Property Law (IPL). Mexico will finally implement a trademark opposition system. It will enter into force on August 30, 2016. The Mexican opposition system will be a
pre-registration system.

In practice, once an application is filed, the Mexican Institute of Industrial Property (IMPI) shall proceed with its publication in the Gazette within the next ten business days. The publication will be made before the formal examination by examiners.

After all the oppositions have been filed and received by the IMPI, a list including the applications that have received an opposition will be published, providing applicants with a 30-day deadline to respond to the arguments, impediments and anticipations mentioned within the opposition brief.

Considering that the new opposition system will not be treated as a procedure within the registration process, an applicant could decide not to respond to an opposition. Failing to respond would not be deemed a tacit acceptance of the opposition.

The opposition system will not be binding for examiners and because it will not be deemed as a procedure within the trademark registration prosecution, oppositions shall not suspend the registration procedure.

Pros

This amendment to the IPL represents an opportunity for third parties to file information, evidence and documentation regarding their respective marks that will allow examiners to issue better informed and more accurate decisions on the registrability of trademarks on the basis of the provisions stated in the IPL.

The system will certainly avoid the hijacking of trademarks by third parties.

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