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Finally a Trademark Opposition System in Mexico

On August 30, 2016, it finally came into force the legislative reform that gives birth to the Opposition System in Mexico, and will apply to all applications for registration and publication of distinctive signs, submitted from that day.

The Opposition System seeks to enhance the effectiveness, shielding and legal certainty to the protection system of distinctive signs, to reduce the number of lengthy and costly litigations and avoid trademark kidnapping; thereby, homologating with international standards, and boosting competitiveness, innovation and foreign market.

The trademark authority, which is the Mexican Institute of Industrial Property (MIIP), defines this system as a “legal instrument that allows anyone to oppose an application for trademark registration, advertising slogan or trade name, considering that might incur in any of the legal impediments of the Industrial Property Law”. The opposition procedure will last three months in total, and it will be developed concurrently with the formal examination conducted by the authority, in order to have all the necessary elements when performing the substantive examination and before resolving whether to issue an official action or to grant the trademark registration, denying the opposition.

The procedure begins with the filing of the application, after which the authority has 10 business days to publish the application for opposition; then, the a 1-month period to file oppositions will be open opens; afterwards, the authority is allowed a 10 day period to publish the list of applications that received opposition; after the publication of this list, it opens an additional 1-month period for responding to the opposition; finally, the opposition file is integrated, in order to be considered by the authority during the substantive examination and before issuing a decision. Schematically the system may be appreciated below:

The Opposition System shall not suspend the registration procedure; it will not be mandatory to oppose nor to respond to the opposition, so the lack of response shall not be taken a tacit acceptance in any sense; oppositions will not binding to the authority, who must perform the registrability analysis regardless of the opposition. If the IMPI grants the registration and deny the opposition, IMPI shall notify to the opponent about the reasons for its decision through a resolution, which might be challenged by the corresponding procedural channels.

The cost of official duties in local currency and including VAT for filing an opposition will be $ 4,331.11 (four thousand three hundred thirty-one pesos and eleven cents).

Opposition System will place Mexico at the forefront, providing an additional defense mechanism, mainly, in the benefit of trademark owners; without this meaning that the authority will leave aside its protectionist role, but giving opportunity to “work along”, by providing elements to enrich its internal analysis, towards a healthy respect for industrial property in which the whole world is immersed.

Fernando Escudero