On December 14, 2015, the Senate approved the project containing the proposed amendments to the Industrial Property Law (IPL), which allow establishing an opposition proceeding related to trademarks. After Mexico's accession to the Madrid Protocol, this reform is undoubtedly the most important reform to the Law in over 20 years.
In the absence of an opposition procedure, local lawyers have tried to remedy this situation by filing “Third party observations”, a figure that have the same purpose as an opposition, but it is not regulated by law, there is no deadline for filing a third party observation and the Mexican Institute of Industrial Property (IMPI) does not reply to observations.
We believe that this reform is the result of Mexico's accession to the Madrid Protocol, since most of the members of such instrument have an opposition system. In this sense, Mexico seeks to modernize and harmonize its trademark system, this would not only to place Mexican title-holders in equal circumstances as foreign trademark owners; that is to say that national trademark owners will be able to oppose to applications of foreign applicants, but also this implementation will offer legal certainty to the trademark registration procedure, in which the opposition will serve as a filter for a proper analysis of a proposed distinctive sign.
An opposition system allows interested parties, persons or associations with a legitimate interest to provide information and if appropriate, evidence that it would not be easily available for the trademark examiner. The opposition shall be based primarily on substantive grounds, especially if a mark is considered contrary to public order, morality or decency or if the mark could fall within the scope of any of the sections of Article 90 of the IPL, usually section XVI is the most frequent, the latter refers to a trademark application which is identical or confusingly similar to a registered trademark.
The IMPI must publish each trademark application within the Industrial Property Gazette, so that interested parties may file the opposition within 1 non-extendable month from the date on which the publication takes effect. This period seems to be relatively short if we compare it with several countries where the period for filing an opposition is either 2 or 3 months with the possibility of requesting an extension of time.
Along with the written opposition, the applicant must attach relevant information or material as well as the payment receipt. The opposition to a trademark application will be prior to the substantive examination carried out by the IMPI, the opposition will not suspend the trademark application procedure nor should it prejudge whether the application is eligible for registration or not, this is something that the trademark examiner has to decide.That is, the opposition would be complementary to the whole trademark examination procedure, the information provided by the opponent may be useful for the trademark examiner but it will not be binding since the examiner will study the proposed trademark in the light of the provisions by Law as well as the criterion on trademark assessment stablished by our higher Courts.
On the other hand, the applicant shall have one month (non-extendable) from the effective date of the notification, so if he so desires, he may file his arguments related to the statements put forward by the opponent. Thus, both the opponent and the applicant may argue according to their interests and both parties’ arguments will be helpful for the examiner when performing the substantive examination between the marks at issue. However, the IMPI is not obliged to rule on the opposition or issue a resolution on the subject. Therefore, there will be no appeal related to the opposition; this means that the implementation of the opposition will not significantly delay the trademark registration procedure.
Once the examiner proceeds to perform the substantive examination and either issue the trademark certificate or the trademark refusal, the authority must inform the outcome of the exam to the opponent. If the opponent does not succeed in convincing the IMPI to refuse trademark protection, the affected party may further file an annulment action against such trademark based on any of the sections of article 151 of the IPL, for instance, when the trademark was granted in error, by mistake, or owing to a difference of judgment, there being another registration in force which is considered infringed because it is that of an identical or confusingly similar trademark or when the trademark registration has been obtained in bad faith, to name a few.
As you can see, there will be major changes within the trademark registration procedure. However, the opposition procedure is intended to be as simple and quick as possible, with short non-extendable terms and without the possibility of suspending the opposition for negotiations, nor the possibility of challenging the opposition.
Advantages of the opposition procedure:
- Harmonize local legislation with the legal systems of the main trading partners of Mexico and give legal certainty to both applicants and trademark owners of already registered marks.
- The opposition offers a deeper analysis of the proposed mark, which complements the trademark registration procedure. This allows avoiding the issuance of trademark certificates that could invade rights previously granted and even avoiding the registration of public domain common names in a particular industry.
- Allow applicants and interested parties to provide information and material that it would not be easily available for trademark examiners.
- Reduce the number of annulment actions; in particular, those filed arguing error owing to a difference of judgment of the IMPI.
- Deter potential users to apply for and use confusingly similar trademarks to those who are already registered.
Although the opposition proceeding seems to be simple, the authority will face new challenges to implement this major change in legislation. We consider that the IMPI will have to improve its software for the publications on the Gazette, better-trained personnel, more resources and infrastructure and even the creation of a department that handles oppositions (such as other trademark Offices around the world that hire experts who analyze and study the oppositions). The reforms that allow the implementation of an opposition procedure will enter into force 90 days after their publication in the Official Journal of the Federation.
Finally, local lawyers must now be monitoring the publications on the IP Gazette and manage the trademark portfolios of our clients with the purpose of identify other parties’ trademark applications that may invade our clients’ rights and, where appropriate, file the opposition as well as any other legal action to protect their assets. However, HERRERO & ASOCIADOS is a firm leader in Spain with reach in Europe and Latin America, this has provided us great experience in this field and we are certain that we will face this new challenge in Mexico with confidence and enthusiasm.