On November 10, 2015 a proposed amendment to the Mexican Industrial Property Law (IPL) was published in the Senate’s Official Gazette. The amendment would implement an opposition system in Mexico which aims to streamline the registration process of trademarks, slogans and the publication of trade names, incorporating this global trend to the benefit of the industrial property system in Mexico and its users. The Senate voted the amendment and was unanimously approved on December 14, 2015. The amendment was sent to the Chamber of Deputies and is expected to be studied and voted early next year.
When the amendment is passed, the following sections and articles would be added to the IPL, among others:
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.
This publication will be the starting point of the opposition. A revised article 120 is proposed to grant the opportunity to anyone, who might consider that the application violates the IPL’s provisions, to bring an opposition within a non-extendable one month term, counted from the date of publication of the Gazette. After that term, a list of applications that are subject to an opposition will be published in the Gazette, within the following 10 business days. It is important to mention that the proposed opposition system will not be binding upon the Mexican Trademark Office (MTO) in the registration process, based on the following facts:
- An opposition will not suspend the examination and registration process;
- Opposition does not automatically grant the role of interested party, third party or party, to the person or entity who filed it;
- Opposition shall not control the outcome of the in-depth examination carried out by the MTO; and
- The MTO may consider, in its analysis, the opposition and the allegations filed by the applicant of the registration.
Considering that the opposition will not be treated as a procedure within the registration process, the applicant may file a response to the opposition. Failing to do so would not be deemed a tacit acceptance to the opposition.
It is proposed that the reform to the IPL, if passed by Congress, would become effective after 90 calendar days of its publication in the Official Gazette of the Federation.
Currently, in Mexico, in-depth examination of an application is carried out by the MTO based on the information or documentation that is at their fingertips, which may or may not be enough. As of today, MTO unilaterally decides whether the proposed application might infringe prior registrations or pending applications. If so, it issues office actions which are served only to applicants, and not to the owner of the application or registration that has been considered as a bar. Hence, registrations sometimes are granted without considering third parties’ rights that might be infringed or affected.
For that reason, it is considered necessary to implement an opposition system in Mexico, to offer third parties the opportunity to file information, evidence and/or documentation that would allow MTO to better assess the registration of a distinctive element, avoiding the possibility of granting registrations that could infringe or jeopardize a third party’s right.
The inclusion of an opposition system is meant to ensure that trademarks are duly examined and granted according to applicable law provisions. The aim is to decrease the filing of cancellation actions, particularly those based on registrations that were granted by error, mistake or as a result of the difference in judgment from examiners.
The publication of this initiative clearly proves the willingness of Mexican authorities to have an improved IP system.
First published in AIPPI e-News