Mexico: Pros and cons of the new opposition system

09-08-2016

Victor Adames

Mexico used to be one of a few countries that did not have an opposition system incorporated into its intellectual property law. However, accession to the Madrid System in 2014 and to the Trans-Pacific Partnership agreement in February 2016 provided a good reason to finally implement one in our country.

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.

"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."

The opposition proceeding will enable the IMPI to have more elements to reduce errors and to determine the granting of registrations which are usually the subject of cancellation actions.

Cons

The opposition system will not be binding for examiners, as they could issue a registration certificate regardless of the arguments raised in the opposition brief.

The system will affect the length of the prosecution of those trademark applications that are opposed, extending the prosecution times for the IMPI and increasing the workload of examiners.

An opposition can be filed by any interested party based on any of the grounds set forth in the IPL, so it may be a way for filing frivolous proceedings by third parties arguing for absolute prohibitions to registration (deceit, descriptiveness, etc) even when those parties do not own a legitimate IP right to defend.

The opposition system may also represent an opportunity for a third party to challenge or appeal any particular communication (or lack of response) within the opposition procedure, with its being possible even to request the suspension of the prosecution of the relevant trademark application for the purpose of willingly delaying the registration of a trademark.

The implementation of the opposition system will require an increase in the number of examiners of trademark applications as well as thorough training regarding grounds for trademark registration denials, which will make the Mexican trademark registration system more effective.

Victor Adames is an associate at Becerril, Coca & Becerril. He can be contacted at: vadames@bcb.com.mx 

Victor Adames, Becerril, Coca & Becerril, IMPI, IPL, trademark, trademark opposition system,

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