On April 28, 2016, Mexico´s Congress approved the proposition for implementing an opposition system during the trademark registration process.
In accordance with the system, 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 Industrial Property Law may express 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 examination of the respective application and determine if the same will be granted or refused, communicating such decision to the opponent. The Industrial Property Gazette will also include a list of applications that receive oppositions.
In this manner it will be possible to alert the Mexican Institute of Industrial Property about possible reasons for refusing a trademark application and provide to the authority the means and information necessary for that purpose. It shall be mentioned that 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 Industrial Property Law, including those of international treaties ratified by Mexico.
It is important to take into account, that the existence of an opposition or the lack of the same will not keep any affected party from attempting to obtain the administrative declaration of annulment of the respective trademark registration.
In this regard, 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.
The aforementioned project 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.
The approval of this project by the Chamber of Representatives means that it will now be reviewed by the Executive and, once approved, it will be published within the Federal Official Gazette to enter into force ninety days after being published.
At Basham, we consider that the opposition system contained by this initiative is desirable since it does not forbid the authority to perform its own analysis of each trademark application, while allowing those who consider themselves affected by the possible issuance of the registration, because they own registration for a similar trademark, because they estimate that the use of that trademark generates deception or error or because they consider that exclusivity over the same is unjustified as it is devoid of distinctive character, to provide to the authority the means to be aware of that circumstance and avoid the unlawful issuance of trademark registrations.
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.