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Finally, a Trademark opposition system for Mexico

On June 1, 2016, the bill implementing the opposition system in Mexico was published in the Official Gazette. The bill, introduced by the Senate, amends various provisions of the Industrial Property Law (IPL), and consists mainly in the inclusion of a trademark opposition system whereby any person who considers that the published application falls in any of the cases referred in Articles 4th and 90 of the IPL may oppose to the granting of the proposed registration. Article 4th of the IPL includes a prohibition for the registration of trademarks that are contrary to public order and morality, while article 90 includes prohibitions for registration based on absolute and relative grounds. The reform will come into force in ninety calendar days counted from its publication in the Official Gazette.

Mexico is currently one of the few countries in the world without a trademark opposition system. This means that the Mexican Institute of Industrial Property (MIIP) conducts the substantive examination and decides whether a trademark should be registered or not based solely on the MIIP Examiner´s considerations and criteria. This has resulted in a generally swift trademark examination, but with a significant downsides: the granting, in certain cases, of registrations for trademarks that were non-distinctive, as well as trademark hijacking, by which persons or entities illegitimately obtained the registration of marks with the purpose of selling them to their rightful owner. Mexico has mechanisms for invalidating trademark registrations in said circumstances, known as nullity actions, but said actions imply acting against a registrant that has acquired an exclusive use as well as an investment in time and resources. Mexico´s recent accession to the Madrid Protocol and the Trans-Pacific Partnership called for a revision of our industrial property system to determine which aspects required modernization. The implementation of an opposition system was a long-standing demand of practitioners and trademark owners.

In accordance with the statement of legislative intent of the bill, the inclusion of the opposition regarding a registration of a distinctive sign will decrease the filing of nullity actions, in particular those based on registrations granted by mistake or oversight of the MIIP. Furthermore, it is expected that it will have the effect of reducing infringement complains, preventing the grant of an exclusive right over a trademark that could invade preexisting rights.

As mentioned, the system adopted by Mexico is a pre-registration opposition. Within ten days after its filing, each trademark application will be published in the Industrial Property Gazette. Once the application is published, any person who considers that the respective trademark incurs in any of the prohibitions set forth in articles 4 and 90 of the IPL may file, within a non-extendible term of 30 days, an opposition to the granting of such application in a writ that may be filed along with the payment of the respective fees and supporting documentation. Regardless, the Mexican Institute of Industrial Property shall not be exempt from performing its own substantive examination of the respective application and determine if the same will be granted or refused. The Industrial Property Gazette will also include a list of applications that receive oppositions.

In this manner, it will be possible to alert the MIIP about possible reasons for refusing a trademark application and provide to the authority the means and information necessary for that purpose. The possibility to oppose will not be conditioned to ownership of a trademark registration, instead it may be based on any of the prohibitions recognized by articles 4 and 90 of the IPL –which, interestingly, includes prohibitions for the registration of proposed marks that are considered descriptive, generic and those reproducing titles of intellectual and artistic works, among others-, comprising those of international treaties ratified by Mexico.

As explained, the opposition system will not eliminate the current possibility that whoever is affected by the issuance of a trademark registration in Mexico may pursue its annulment, but it will allow that person to oppose such issuance within the trademark registration process by indicating to the authority the possible motives for refusing registration.

One controversial aspect of Mexico´s new system is that when the MIIP considers that an opposition should not prevail, this will not be communicated to the parties through an office action or resolution detailing the reasons for the decision. The MIIP will issue the respective registration certificate –granted that the Examiner does not find grounds for objections- and this will be understood as a decision that is unfavorable to the opponent. Another aspect that has been criticized is the 30 day term for submitting an opposition which may be somewhat tight considering that a power of attorney and, in certain cases, supporting evidence would be needed.

Despite this, Mexico´s new opposition system has been welcomed in general by practitioners and authorities. The system pursues the goal of reducing the possibility that trademark registrations may be unlawfully granted and that affected parties may have, after registration is granted, to attempt the proceeding for obtaining its annulment. It should become an effective complement to notable efforts of the MIIP and practitioners to prevent trademark hijacking. With trademark filings in Mexico on the rise, it is expected that the opposition system will be an interesting tool not only for trademark owners, but for those entities and persons who, not having a trademark registration or application, consider that the registration of a proposed mark should not be granted.