Mexico: The Opposition System In Mexico Celebrates Its First Anniversary

Last Updated: 16 August 2017
Article by Sofía Arroyo

Sofía Arroyo, Olivares, reviews the initial results of the Mexican Opposition System and points out both the good and not so good practical consequences the system has rendered in its first year of life.

As many of you may know, opposition proceedings are now available in Mexico as the Law reform that made this possible came into force in August 2016, therefore this August we celebrate the first anniversary of such system.

In view of the above we consider this is a good opportunity to make a review of the initial results of such system and to point out both the good and not so good practical consequences and/or results this system has rendered in its first year of life.

Nevertheless, before proceeding with such analysis we consider important for context reasons to remember the peculiar characteristics of the Mexican opposition system, which is somewhat sui generis when compared to other opposition systems throughout the world.

One of the things the Mexican Institute of Industrial Property (IMPI) currently likes to boast throughout the world is that obtaining a trademark registration in Mexico is fast. This is because if no formal requirements and/or relative or absolute grounds of refusal are found by the examiners, the registration certificate can be granted within six months as of filing date or less.

Consequently, when IMPI was required to prepare a Law reform to introduce oppositions in Mexico, they were adamant to create a system that allowed them to maintain the possibility of granting trademark registrations within the above mentioned six month period. They therefore developed an opposition system that is fast and runs parallel to the registrability exam conducted by the trademark examiners.

Considering the above, the opposition system in Mexico has the following characteristics:

  1. Trademark applications are published for opposition on IMPI's Gazette within 10 days as of their filing date, granting a 1-month term to third parties to file oppositions.

    This characteristic is different from other opposition systems in which the applications are published only after they have "approved" the examination from the corresponding trademark office.
  2. After an opposition is filed, it is also published on IMPI's Gazette, granting the applicants a 1-month term to respond to the opposition.
  3. While the terms for filing and responding to the opposition are running their course, IMPI will proceed to conduct their own analysis of the application including all formal requirements and classification issues, absolute grounds for refusal, and relative grounds for refusal.
  4. Once IMPI has finalized their analysis, they will proceed to issue a resolution in the form of the granting of a registration certificate or an official communication refusing registration for the opposed mark.

However, no formal response regarding the opposition is issued, hence the "success" or "failure" of the opposition depends on whether IMPI granted or refused registration for the opposed mark.

In this manner, if IMPI does not agree with the content of the opposition and/or does not find any grounds on which to refuse registration they can still grant trademark registration within the above mentioned 6 month term.

Considering the above, we will now proceed to comment on the advantages and disadvantages of this opposition system.

Advantages

Having an opposition system in Mexico, even with its peculiar characteristics, does present some advantages.

The opposition system fulfills the intent to be fast and avoid delays in the prosecution of trademark applications.

Likewise, it also fulfills the function of alerting trademark owners of potentially conflicting junior applications, allowing them to try to solve said conflict either via an opposition or through a negotiation process.

Please note that according to Mexican IP Law, it is possible for trademark owners to request the annulment of registered trademarks, based on likelihood of confusion to senior trademark registrations. This proceeding is independent from the opposition proceeding and can be initiated by senior trademark owners within a 5-year term as of the date in which the registration of the challenged mark was published on IMPI's Gazette.

However, when compared to an opposition, going through the annulment process has some practical disadvantages:

  • The annulment process is formally a litigation process with two possible appeal stages and therefore it is significantly more expensive than filing an opposition.
  • Because of its "litigation" nature, the annulment process can be delayed for numerous years, more so if the process goes through the appeal stage. On the contrary, the opposition process is fast and even if official actions are issued, most trademark applications – with or without opposition – will have a final resolution regarding the prosecution stage, which will be issued by IMPI in between 6-18 months.
  • The annulment process is a conflict between two valid trademark registrations; therefore, the owner of the challenged junior registration can use their trademark without risk of infringement throughout the entire annulment process. However, since, as mentioned above, the annulment process can delay various years, it is only one year after the annulment has become final that the owner of the senior trademark will be in a position to initiate infringement actions against the counterpart and only in the case said party is still using their mark.
  • Likewise, since the use of the opposite mark is done under the protection of a validly granted trademark registration, the owner of the senior mark does not have the possibility of claiming damages for the use done during the annulment process.
  • On the contrary, if the opposition is successful and the junior application is refused, the senior trademark owner can (immediately after the refusal becomes final), initiate infringement actions in case of unauthorized use of the conflicting mark.

Disadvantages

Even though the above-described system does indeed fulfill the objective of being a fast process that does not delay the prosecution of trademark applications, after one year in force we have found that this system does present some inconveniences, which we will try to address below.

1) There is no time for a negotiation process prior to filing an opposition

Since the term to file an opposition is of just one month, and because the Mexican IP Law does not contemplate the possibility of requesting an extension term to file the opposition in view of a pending negotiation, it is practically impossible to reach an agreement between the parts prior to the opposition term.

Consequently, in practice, the recommended course of action is to first file the opposition and afterwards contact the trademark applicant to try to reach an agreement while IMPI conducts their analysis of the application.

2) The prosecution of an application cannot be suspended due to a negotiation process between the parts

According to Mexican IP Law, applications can only be suspended when there is either a nullity action or a cancellation action on the account of non-use challenging a senior mark that was cited as a barrier by IMPI.

Therefore, if as a result of an opposition the parts decide to enter into a negotiation process, the application that prompted the opposition cannot be suspended and the parts have to reach an agreement while IMPI conducts their analysis of the application. If IMPI finalizes their analysis and refuses registration, then the affected applicant will be forced to file a new trademark application and commence the registration process anew after an agreement with the counterpart has been reached.

3) IMPI does not expressly address the opposition in their resolution

As mentioned above, after IMPI has finalized their analysis of the application they will proceed to issue a resolution to said application in the form of either a registration certificate or an official communication refusing registration, however IMPI does not address the content of the opposition writ specifically.

Evidently, this situation is particularly troublesome in the cases where the opposition is "unsuccessful" and the trademark registration of the opposed mark is granted because the opposing party does not know which were the examiners' reasoning for disregarding the opposition and granting registration.

4) The opposition procedure takes place at the start of the trademark application process, which can result in "unnecessary" oppositions

As previously mentioned, the opposition procedure begins 10 days after the filing of the new applications when such applications are published for opposition.

However, since IMPI will also conduct their own analysis of the application it is entirely possible that, during the course of such analysis, IMPI will issue official communications, which, as mentioned, can contain either formal requirement or absolute/relative grounds of refusal.

Likewise, by virtue of the Mexican IP Law, if an applicant fails to file a timely response to any official action (the term granted to respond is 4 months as of notification date), the application will become automatically abandoned.

Consequently, if an opposition results in the refusal of the opposed application or the issuance of an official action citing senior marks as barriers, which is not responded to and results in the abandonment of the opposed application, then we can say the opposition was successful.

However, if IMPI issues an official action with formal requirements and said official action is not responded to, this renders the opposition unnecessary. Nonetheless, third parties still have to file the opposition in a precautionary manner because the official action with formal requirement will very likely be issued after the 1-month term to file the opposition, and even if said official action was issued within this 1-month opposition term, the applicant has a 4-month term to respond to the official action, which will always expire after the opposition term.

Therefore, as mentioned, third parties always have to file the opposition against potentially conflicting junior applications because there is no time to conduct prior negotiations and because even if the application becomes abandoned due to formal requirements the opposition term expires before the term to comply with the formal requirements.

Unfortunately, as you will realize, this situation is generating a significant workload for trademark examiners and IMPI, which we consider could be mitigated if the Mexican IP Law was amended and the opposition stage was moved to be the last stage of the trademark prosecution process. In this manner, the applications that are abandoned by failure to respond to an official action will never reach the opposition stage.

Conclusion

Lastly, we would like to finalize this article by pointing out that from a statistical standpoint there is still not enough data to make a detailed assessment as for the efficiency of the opposition system in relation to the purpose of preventing the registration of conflicting trademarks. As previously mentioned, this is because when official actions are issued by IMPI, the prosecution process extends to approximately 18 months.

Therefore, so far we have only seen the "resolution" of oppositions that have been "unfavorable" as IMPI has decided to grant registration to the opposed mark, though these unfavorable oppositions seem to be a relatively low number when compared to the total number of opposition files which is currently around 10%. Nonetheless, please note this number will likely change as more resolutions come forward.

In this point, we soon expect to start receiving information regarding the number of opposed applications that get abandoned at either the formal requirements stage or by failure to respond to an official action citing the opposing trademark as barrier for registration.

Finally, we expect that by the end of 2017 or beginning of 2018 we will start to see refusals for registration in opposed marks, information which will allow us to be able to make a more detailed analysis of the actual impact oppositions are having in the trademark examiners and their resolutions.

Originally published by The Trademark Lawyer, CTC Legal Media.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Clarke, Modet & Co
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Clarke, Modet & Co
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions