Trademark opposition in Mexico: Seeking fairness
It seems Mexico is preparing for a trademark opposition system. This matter has acquired a certain level of controversy in the intellectual property field because even though the majority of lawyers are strongly defending and promoting the system, there are others who don’t.
Nonetheless, the truth is that having a trademark opposition system in Mexico would recognise the necessity to follow the international trend—that such systems have always been important with regard to IP matters. This is no exception.
Hence, specialists are no longer discussing whether the system should be brought to our country or not, but how it is going to be implemented and how Mexico can make the best out of it.
Mexico has an invaluable opportunity to innovate and create an opposition system adapted to Mexican legislation. This is a crucial moment and should not be underestimated—the fact that our country was not a pioneer on the subject should be seen as an advantage instead of a drawback. By now Mexico is able to look externally and analyse the experiences of other jurisdictions that have implemented opposition systems, learn from them and improve on them.
In general terms, and as was defined by the secretariat of the World Intellectual Property Organization, opposition systems offer third parties the opportunity to oppose a trademark within a certain period of time provided by the applicable law in each country.
Trademark opposition procedures are meant to achieve fairness, specifically ensuring that trademark registrations are duly examined and therefore granted legally and fairly. These systems are necessary for legal certainty related to granting registrations.
Currently there is a consensus on the need for private parties to get involved in public matters, because who is better at enforcing and protecting rights than their owners? Therefore, the trademark opposition procedure has come as a comprehensive and creative solution. The state (through its trademark office) decides whether a trademark should be granted, but third parties—persons or entities—may actively help the state’s function by exposing any existing impediment to the registration and avoiding illegal and incorrect determinations.
We can conclude that trademark registrations granted in an opposition system are stronger, as they have already overcome alleged impediments.
In addition to the above, trademark opposition procedures (specifically pre-registration systems) act as preventive measures, compared with the more remedial cancellation proceedings, which are mostly very expensive.
Opposition scenarios
Even though the specific procedure for trademark opposition is determined by each country, the general opposition scenario is as follows. A trademark application is filed before the trademark office and could be published in the local IP gazette (i) right after the application has been filed; (ii) once the examination of formal requirements has been completed;
(iii) once the examination of grounds for refusal has been issued; or (iv) after the trademark has been granted.
After this publication any third party entitled by law can file, within a specific period of time, an opposition to the registration based on an absolute or relative ground. The trademark office will inform the applicant, which will be able to try to overcome the opposition or negotiate with the opponent. This procedure may end either with a trademark registration certificate or with an official refusal of registration.
Analysing thoroughly the features of the procedure is an appealing topic itself, but the subject of this article is to explain the crucial points that should not to be sidestepped in Mexico’s upcoming system.
It is useful to understand how the current system works. Trademark applications are filed before the Mexican Institute of Industrial Property (IMPI). The office then proceeds with the examination of formal requirements and the examination of grounds of refusal. At this stage, the IMPI unilaterally decides whether the application might infringe another registration and, if so, will issue an official action.
It is important to mention that only the applicant is notified about the action; the owner of the mark cited is not notified of this situation. At the moment, right after trademark applications are filed they immediately enter into the IMPI’s official online database, which is available to everyone. Let’s say that a very cautious trademark owner notices an application that might harms its existing IP rights. The owner may appear before the IMPI and inform it of the disputed registration.
Mexican law firms have tried to compensate for this situation by preparing third parties with observation briefs that demonstrate the alleged infringement and even holding meetings with the authorities. Nonetheless, the IMPI is not compelled by law to even take into account the owner’s allegations, so the registration may be granted in the end.
By that time, the only course of action for this owner is to appear before the IMPI again and challenge the validity of the trademark registration through a cancellation action based on existing rights, and then the ordeal begins. This type of proceeding, the results of which can be challenged in two further instances, may take up to five years to be finally decided by a judicial authority.
"The only course of action for this owner is to appear before the IMPI again and challenge the validity of the trademark registration through a cancellation action."
Moreover, in the past few years an unfortunate situation has happened. The number of cases related to ‘abduction’ or ‘hijacking’ of trademarks has increased. This is when for example a third party, acting in bad faith, applies to register a prestigious automobile brand in several classes that usually would not be protected by the automobile company—for example, classes 1, 2, 3, 5, 16, 19, etc.
Considering that in Mexico there is no publication of applications, it is very difficult for the trademark owner to become aware of the existence of an application filed in bad faith. Therefore, it is difficult to avoid its granting. Once the marks are granted, it would be necessary to initiate cancellation actions against each of the registrations, which obviously represents a considerable amount of money and time.
The same happens in every case where there exists a clear and evident impediment to registration, such as obvious descriptiveness, generic nature, or a lack of distinctiveness.
Under this scenario, it is undeniable that it is possible to improve the Mexican model, so the implementation of the trademark opposition system should be well designed to guarantee the accomplishment of its many objectives and make the most out of it.
Time keeping
This system (as every other) has its advantages, it has its shortcomings too, especially concerning periods of time and expenses.
The Mexican system for granting trademarks is generally efficient. In cases where an application progresses smoothly and no official actions are issued during prosecution, the certificate of registration can be obtained in about six months. Therefore, it might be important to implement a trademark opposition system that does not jeopardise this efficiency.
A relevant concern regarding times derives from the fact that if they’re not established, every decision from the IMPI in the trademark opposition system would be an administrative act, and thereby it may be appealed in further instances, which translates to time and money for the parties involved.
Nonetheless, it may be valuable to consider a real and effective conciliation phase so that the parties involved in IMPI proceedings have the chance to achieve a settlement on amicable terms instead of going through long and expensive procedures and trials. In any event, the trademark office needs to change its current view regarding consent letters or coexistence agreements, since although this kind of agreement is bound to the parties, it is highly desirable that the trademark office widens its criteria and accepts private agreements, especially taking into account that its aim is to preserve IP rights.
In addition, the opposition system should duly foresee what would be the legal standing of third parties. This is to set the specific grounds on which to base the filing of an opposition (absolute, relative, or both) to determine who will be entitled to initiate the procedure and also the formalities of it; to determine whether the opposition would be filed in a brief or through a template; to establish fair fees and the possibility of an audience and negotiating/conciliation phase. It is definitely complex but, if done right, it could be the recipe for a successful system.
It is essential to be well aware that in cases of opposition, trademark procedures and certificates issuance will take longer, but as mentioned before, trademark owners will definitely have more legal certainty.
In conclusion, it seems right to recognise that now is the moment to implement the trademark opposition system in Mexico and take advantage of the opportunity to design a model whereby government and industry work together to create legal certainty and fair decisions.
Elizabeth Arroyo Quintana is an attorney at law at Becerril, Coca & Becerril. She joined the firm in 2013. As attorney of the contentious affairs department, she focuses her practice on the areas of IP litigation, anti-counterfeiting, and constitutional law. She can be contacted at: earroyo@bcb.com.mx
Victor Manuel Adames Muñoz is an associate at Becerril, Coca & Becerril. He joined the firm in 2004. As manager of the trademarks department, he focuses his practice on trademarks, copyright, and domain names prosecution in Mexico and abroad. He can be contacted at: vadames@bcb.com.mx
