After the Madrid System entered into force in 2013, Mexican trademark proceedings went through some amendments including the implementation of a formal opposition system that was approved by the Senate in December 2015.
This change was necessary, among other reasons, due to Madrid System´s demand regarding final refusals or rejections. Specifically, they must be issued within the term of 12 months from the local designation of the International Registrar. In this way, the opposition system shall allow the examiner to count on additional information regarding third party interests that may be affected. This will help to determine whether the new application can be registered or not, thus avoiding weak criteria in the assessment of the cases with the sole purpose of meeting the corresponding terms.
The implementation of the opposition system in Mexico does not only allow for the effective application of the Madrid Protocol, but it also brings harmonization between the local registration system and the international practices related to trademark registrations. Except for eventual disadvantages, such as the extension of the length of the registration procedure, this implementation increases the legal security and prevents the diminishing of trademark holders´ rights.
On the other hand, this opposition system reduces the filing of administrative nullity claims (against already registered marks) since they make up for the nonexistence of an opposition procedure.
In connection with the proceeding per se, the amendments made in the IP law establish that within 10 working days following the filing of new trademark applications, the same shall be published in the IP Gazette for opposition purposes, for an non-extendable term of one month.
Once the opposition term has lapsed, the Mexican TM Office (IMPI) will publish, within 10 working days, a list of all applications that met oppositions by third parties. As from the publication date of the applications with opposition, a non-extendable term of one month is set in order for the applicant to reply to the opposition.
During the examination stage, the Examiner will evaluate the grounds of opposition as well as the defensive arguments filed by the applicant (if they have been filed), though the Examiner will be able to consider the arguments exposed by both parties or disregard them at his or her discretion.
The oppositions shall not be considered as part of the TM registration proceeding, so the same shall not suspend the registration time frames of each application. This is why it will not be mandatory for the applicant to reply to the opposition from a third party. Lack of reply from the applicant shall not be considered as an acceptance of the opposition´s arguments.
Finally, in connection with the formalities of the opposition filing, the same must be filed in writing, together with the documents estimated as relevant, as well as with the corresponding tax payment receipt.
Originally published 14 June 2016
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