At the end of last year, a significant amendment to the Mexican Industrial Property Law (IPL) was proposed. The amendment concerned the implementation of an opposition system in Mexico to streamline the registration process for trademarks and slogans and the publication process for trade names, thus, harmonizing the industrial property system in Mexico with global trends and benefiting its users.
On April 28, 2016, the Chamber of Deputies approved a Decree amending the IPL to implement a trademark opposition system in Mexico. As a consequence of such amendment, new provisions will be added to the IPL, including:
Article 119. – Once the application has been received, the Institute shall proceed, within 10 business days, with its publication in the Gazette and carry out a formal examination of the same, as well as the documentation filed, to determine whether the requirements specified in this Law and its Regulations are obeyed. (emphasis added)
The above-mentioned publication will be the starting point for the new opposition system.
In addition, Article 120 will be amended in order to grant the opportunity to anyone who considers that an application violates the IPL´s provisions, to file an opposition within one month of the date of its publication in the Gazette. No extension of the one month opposition period is allowed. After that one month opposition period expires, a list of those applications that were opposed will be published in the Gazette within the following 10 business days.
It is important to mention that the opposition system has no binding effect on the Mexican Trademark Office’s (MTO) conduct of the registration process and, in particular:
- The opposition will not result in any suspension of the registration process;
- Opposing an application does not grant the opposing party any status as an interested third party;
- The opposition shall not automatically determine the outcome of the in-depth examination carried out by the MTO; and
- The MTO may consider, in its analysis, the opposition and statements made in response by the applicant.
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 amendment Decree has been passed to the Federal Executive Branch for publication in the Official Gazette of the Federation (Diario Oficial de la Federación) and it will become effective 90 calendar days after its publication.
Under the current system in Mexico, an in-depth examination of an application is carried out by the MTO based on the information or documentation at hand, which may or not be complete. The MTO unilaterally decides whether the proposed application might conflict with prior registrations or pending applications and, if so, issues office actions which are only served on the applicant. Such office actions are not served on the owner of any application or registration that has been considered relevant by the MTO. Hence, registrations sometimes are granted without the MTO being fully informed regarding third parties’ rights that might be infringed or affected.
For such reason, this amendment to the IPL is a great opportunity for third parties to file information, evidence, and documentation regarding their respective marks that will allow the MTO to better assess the registrability of a distinctive element in a new application, and lessen the possibility of the MTO granting a new registration that could infringe or jeopardize previously granted rights.
The inclusion of an opposition system is meant to ensure that trademarks are duly examined and granted according to applicable law. The aim is to decrease the filing of annulment actions, particularly those asserting error, mistake or inconsistent judgment by examiners.
This amendment clearly demonstrates the willingness of Mexican authorities to further improve the IP system.