Mexico has harmonized its industrial property law to international standards by incorporating the opposition system into its legal framework. As of August 31, 2016 trademark owners will be entitled to oppose not only to the registration of any trademark filed by third parties that may be considered as infringing such owners' rights, but may also file oppositions against applications lacking distinctiveness (i.e. generic or descriptive signs), as well as against applications contrary to public order, moral and good customs, or contravening any other legal provision.
One of the opposition's main advantages is avoiding the registration of trademarks that could invade previously conferred rights, providing with a solution to potential extensive and expensive litigation proceedings. Some other advantages of the opposition are:
- Preventing dilution of registered trademarks;
- Diminishing trademark hijacking;
- Warning trademark owners about potential non-use cancellation actions.
Even though it is not mandatory to file or contest an opposition, it is highly recommended not overlooking the possibility of influencing the animus of the Examiner analyzing a trademark's registrability. Hence, it is worth evaluating this legal resource to strengthen and securing your trademark rights.
ACTIONS TO CONSIDER
Implementing a trademark watch service in Mexico is of the utmost importance and it is intended to become a common practice for trademark protection. This watch service allows trademark owners to properly monitor conflicting applications in order to either oppose to their registration or contest any opposition filed by third parties, within the non-extendible 30 day term from publication in the Industrial Property Gazette.