Trademark opposition system: effective as of August 30th 2016 in Mexico

mexico-1524499_640With the coming into force of the Madrid Protocol in Mexico, it was necessary to implement an opposition system to strengthen the registration process of trademarks and enhance the competitiveness as well as the dynamism of intellectual property rights’ protection in Mexico.

At the end of the year 2015, an amendment to the Mexican Industrial Property Law (IPL) was thus proposed. The proposed amendment relates to the implementation of an opposition system in Mexico in order to streamline the registration process of trademarks, thus harmonising the industrial property system in Mexico with global trends.

On April 28, 2016, the Chamber of Deputies approved a decree amending the IPL to implement a trademark opposition system in Mexico. On June 1st, 2016, the amendment decree was published in the Official Gazette of the Federation. (Diario Oficial de la Federación). It will enter into force on August 30, 2016, 90 calendar days after its publication.

According to Article 120 of the decree, a third party can file an opposition within one month of the the trademark application being published in the Gazette. No extension of the one month opposition period is allowed.

This new procedure will allow for an improved assessment of trademark applications by the Mexican Trademark Office (MTO). Before the 2016 reform, the MTO unilaterally decided whether the proposed application might create confusion in respect of prior registrations. If a third party considered that a trademark application could infringe its rights, it would not be able to oppose the application for registration of the trademark and would simply hope that the MTO itself would find that there was a likelihood of confusion.

Following the reform, today any trademark owner may oppose the registration of a trademark application and as such, may submit information which may have been disregarded by the MTO.

However, the proposed opposition system has no binding effect on the Mexican Trademark Office’s conduct of the trademark registration process. In fact, the MTO may take into consideration the opposition made by a third party and the allegations filed by the applicant of the registration in response to the opposition, but this is not compulsory. An opposition will therefore not determine the outcome of the in-depth examination carried out by the MTO, nor will it result in any suspension of the registration process.

The MTO will still continue to provide absolute and relative grounds during the examination of a trademark.

It is therefore important to note that the new opposition system will not be considered as a procedure within the registration process. An applicant could decide not to respond to an opposition made by a third party. Failing to respond would not be deemed to be a tacit acceptance of the opposition.

It will be interesting to see how the case law develops.

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