The Mexican Senate’s bill establishing a Trademark Opposition System in Mexico was approved by the Chamber of Deputies on April 28, 2016. The bill was approved by the President and will become effective August 30, 2016.
The new system establishes a publication protocol by the Mexican Institute of Industrial Property (IMPI) whereby trademark applications will be published within ten working days of their filing date. Any third party will have the right to file an opposition to an application during the month following the application’s publication date. The IMPI will publish a list of opposed applications and the applicant will have one month from this date to file a response to a third party opposition.
Unique to this system and unlike the US system, the IMPI is not obliged to consider the opposition and there is no formal proceeding other than the filing and the response. Ms. Viviana Sztrigler, a Mexican trademark practitioner and partner at Cross Border Consultants, indicates the proceedings thus appear informational in nature for the IMPI which continues examination taking into account (or not) the opposition papers. Though the IMPI will provide opposers with written notice as to whether it has allowed or denied the application opposed, there is no formal decision as to the allegations in the opposition papers, unlike a post-registration cancellation action. In some respects, this may be considered more akin to the Letter of Protest proceeding in US cases.
Ultimately, if the application is allowed, third parties may still request the cancellation of the registration via other procedures previously established by Mexico’s Industrial Property Law. Ms. Sztrigler indicates the utility of these filings remains to be seen but practitioners are hopeful this process may assist brand owners in proactively stopping registration of conflicting marks, thereby avoiding the need for a more costly and time consuming cancellation proceeding.
Written with contributions from Viviana Sztrigler of Cross Border Consultants.