On June 1st 2016, the Executive Order for the reform and addition of regulations to the Industrial Property Law was published in the Federal Official Gazette, which incorporates the opposition procedure into the legal framework. First, it should be pointed out that this type of opposition procedure as it exists in other jurisdictions has never existed in our industrial property legal system. Nevertheless, this Industrial Property Law (LPI by its Spanish acronym) reform was approved by Mexico's federal Congress between November 2015 and April 2016 and will redress this legislative oversight. Said reform was approved by the Chamber of Deputies (congressional house that receives bills for consideration) on April 28 of this year. Moreover, it is worth mentioning that a vacatio legis of 90 calendar days is also under consideration.
In general terms, the LPI reform establishes the following:
- Modification of the second paragraph of Section X of Article 6 that establishes that final judgements issued by the Mexican Institute of Industrial Property (IMPI by its Spanish acronym) in administrative-law actions, along with decisions modifying the conditions or scope of patents or granted registrations, shall be published in the Industry Property Gazette in the month following the date of issue.
- Modification of Article 119 that
requires upon receipt of the trademark registration application
- Publish said application in the Industrial Property Gazette no later than ten business days after receipt of the application.
- Carry out the examination of said application and substantiate documentation provided to verify compliance with respective legal and regulatory requirements.
- The opposition procedure to trademark
registrations is included in the new Article 120 of the LPI, and it
is described below:
- The proceeding can be filed by any individual or entity.
- The proceeding can be filed against any trademark registration applications that are deemed to be defined by the cases set forth in Articles 4 (contents or form are contrary to the public or moral order, good conduct, or are in violation of the law) and 90 (grounds for denial of trademark registration).
- The non-extendable period for disputing a registration is one month following the date the application is published.
- The opposition shall be filed in writing, accompanied by documentation deemed suitable, along with a receipt verifying payment of corresponding fees.
- The filing of an opposition action does not suspend the application process, nor does it certify the opponent as party in interest, third party, or litigant.
- The opposition proceeding shall not bias the results of the merit examination that IMPI imposes on the application.
- IMPI shall publish a list of applications that have become the subject of opposition proceedings in the Industrial Property Gazette no later than ten business days after one month since the date the opposition was filed.
- The trademark applicant has a period of one month, counting from the corresponding publication date, to state its rights related to the legal grounds, impediments or prior arts cited in the written opposition.
- IMPI may review the written opposition and applicant statements during the merit examination process.
- Modification of Article 123 of the LPI which provides that if the applicant changes or substitutes the trademark in its effort to remedy legal impediments to the trademark registration in its response to the opposition claim within the established time period, the trademark applicant shall be required to start over its application process from the beginning.
- Addition of a third paragraph to Article 125 of the LPI requiring IMPI to provide the opponent of the trademark registration data in writing regarding the title issued, or the decision made to deny the registration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.