Trademark oppositions in Mexico: Strengthening the defences

19-05-2018

Marisol Balandra

Trademark oppositions in Mexico: Strengthening the defences

massonstock / iStockphoto.com

Although Mexico’s trademark opposition system is still young, there are already calls to amend it so it can carry more legal weight. Marisol Balandra of Uhthoff Gomez Vega & Uhthoff reports.

The main reason that trademark oppositions are filed is to counter a potential infringement of the rights of the opposing party. There are often other issues at play, such as the interest of business owners to market their products and to attract consumers to their trademarks. Avoiding confusion of similar trademarks in the market is also a reason to file oppositions.

Under the Mexican IP Law, the registration of a mark for its use in trade, industry or services is not compulsory. Notwithstanding this, registration is needed for protection.

In the past, Mexico did not have a trademark opposition system, and applications that were approved by the examiner proceeded directly to registration; trademark owners did not have the legal opportunity to oppose an application with the intention of preventing registration.

The Mexican Institute of Industrial Property (IMPI) unilaterally took the decision on whether the proposed application might conflict with prior registrations or pending applications, and if it was the case, office actions were served on the applicant. The applicant then had to respond within a period of two months, with an extension of two additional months available.

The office actions that were issued by IMPI citing anticipatory references were not served to the owners of the cited registrations, which constituted a disadvantage for them because the references could not be pronounced against the granting of such application or to let the examiner know of other relevant aspects such as the fame or notoriety of the trademarks.

When Mexico became part of the Madrid Protocol, it was deemed that Mexico’s IP system needed an opposition framework, so on April 28, 2016, a decree was approved amending the IP Law to incorporate a trademark opposition system in Mexico.

Pros

Once a trademark application has been received by IMPI, the authority will carry out a formal examination of the mark, as well as the documentation filed, to determine whether the requirements specified in this law and its regulations are complied with.

With this opposition system, IMPI has the ability to determine whether an application  infringes any  part of the  Mexican IP Law, taking into consideration that any opposition filed will not result in a suspension of the registration process, since it shall not automatically determine the outcome of the substantive examination carried out according to the Mexican IP Law.

One of the main advantages of the opposition system is the ability of an examiner to know about the existence of foreign equivalents or marks that are similar in meaning but dissimilar in appearance and pronunciation. 

Cons

The main disadvantage of the Mexican opposition system is that it has no binding effects on IMPI, but it will have an impact if a dispute reaches the federal courts.

Due to the mentioned disadvantage and the growing numbered of filed oppositions in Mexico, on March 1, 2018 a proposal to amend the recently implemented opposition system was presented before the Permanent Commission of Congress. If the proposal is approved it will come into force within 60 working days of its publication in the Gazette.

"The proposal calls for a change to the nature of the opposition procedure, from a challenge against a pending trademark application to a legal procedure."

The proposal calls for a change to the nature of the opposition procedure, from a challenge against a pending trademark application to a legal procedure where evidence and final pleadings will have to be submitted.

All kinds of evidence would be admitted with the exception of confessional and testimonial evidence. The evidence would have to be studied by the examiner in charge of the opposition, giving the applicant of said opposition the opportunity to make final pleadings.

To conclude, Mexico’s opposition system has now provided an additional defence mechanism in the trademark-granting process, and this has been mainly beneficial to trademark owners.

Marisol Balandra is an associate lawyer at Uhthoff Gomez Vega & Uhthoff. She has degrees from the Universidad De Las Americas Puebla and the Universidad Iberoamericana Puebla. She is a member of the Association for the Protection of Industrial Property. She can be contacted at: mbalandra@uhthoff.com.mx

Marisol Balandra, Uhthoff Gomez Vega & Uhthoff, trademark oppositions in Mexico, Mexican Institute of Industrial Property

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