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Almost a year after Mexico implemented a trademark opposition system, rights owners are coming to grips with the new regime.
Under Mexico’s new trademark opposition system—which was approved by the Mexican Congress in April 2016 and became effective on August 30, 2016—trademark applications will be published no later than ten days after filing, oppositions must be filed 30 days after publication, and they must be based on absolute or relative grounds.
An opposition won’t result in the suspension of the registration process, and it is not mandatory to object or respond to the opposition. In addition, opposing an application doesn’t grant the opposing party any status as an interested third party.
The Mexican Institute of Industrial Property (IMPI) decides during examination whether an application might conflict with earlier rights and, where necessary, issues office actions.
Álvaro Huerta (Malpica, Iturbe, Buj & Paredes, Mexico) says around 2,400 oppositions have been filed so far.
“I would say that it has been working rather well from the trademark holder perspective. IMPI has decided 350 oppositions, with around 120 registrations being granted,” he adds.
Mr. Huerta says that trademark owners have a “new opportunity” to protect their rights against the registration of another, later mark.
“As a result, it will be easier and less expensive for trademark holders to protect their rights as they have an additional stage in which an application might be rejected, instead of having to challenge a registration,” he says.
While the new system is not binding on IMPI examiners, IMPI has mentioned that it will analyze the oppositions that are filed.
Another issue is that a trademark owner has to consult the Official Gazette to find out whether someone has filed an opposition.
“You have to review the Gazette; if you don’t and someone has filed an opposition, you may lose the right or possibility to file your arguments,” says Mr. Huerta.
“Trademark holders will have to invest time in reviewing all the published Gazette to (i) review if they should file an opposition; or (ii) review if an opposition has been filed in connection with their recent applications,” he concludes.
Providing the Arguments
The trademark opposition system is a positive step forward for trademark owners in Mexico, and it brings Mexico into line with other jurisdictions, but how does it work in practice?
“You can provide IMPI with arguments and evidence to show that the pending application might violate your rights if you hold a prior registration,” Mr. Huerta explains.
“It allows you to use an alternative stage to protect your rights on a trademark if someone tries to file a similar mark.”
Mr. Huerta says it is a “good start” to have an opposition system, “even though there are some issues that can be worked on in the coming months and years.
“For example, the process should be binding on IMPI, it should be possible to specifically serve the holder of the application that was opposed, and a decision should be issued to explain to the opponent the reasons why the opposed application was granted.”
Other countries have opposition systems in which the oppositions are read independently—the examiner doesn’t analyze the opposition, he adds.
“Here the examiner in charge of the registration process is the same person that will review the opposition as part of the substantive examination.”
So far, Mr. Huerta adds, IMPI has been notifying the opponent when the registration is granted, but he reiterates that it is not legally obliged to.
While this is a good start, “there is still room for improvement,” he concludes.
In October 2016, INTA and IMPI discussed best practices for examiners following the implementation of the trademark opposition system, as part of the fourth IMPI/INTA Annual Training Seminar that took place in Mexico. In particular, the discussions included the need to support the interpretation that consideration of an opposition to a trademark application during the examination process should be mandatory, rather than voluntary, for IMPI. During the course of the seminar, IMPI officers confirmed that all oppositions would be taken into consideration as part of the substantive analysis of an application. INTA welcomes this development and hopes to continue the dialogue with IMPI to ensure the most effective and productive application of the new opposition regulations as another step towards a model trademark protection system in Mexico.
Álvaro Huerta , Trademark opposition system, Mexican Congress, IMPI,