On June 1st, 2016, the Decree reforming some provisions of the Industrial Property Law to include the Opposition System in Mexico was published in the Federal Government Gazette and said reform will become effective in our trademark procedure as of August 30, 2016.
Therefore, now that we are now less than a month away from the implementation of the opposition system, the issues to be considered by those interested in protecting or expanding their protection of their trademark portfolio in Mexico are:
1. System overview:
The approximate time frame of the opposition procedure will be three months, summarized as follows: 10 business days for IMPI to publish trademark applications as of their filing date; one month for thirds parties to oppose the registration of a published trademark application; 10 business days for IMPI to publish a list of applications that received an opposition; one month for applicants to respond to the opposition.
Opponent's and applicant's arguments will be analyzed during the substantial examination, and the authority, with independency, will resolve if grants the registration or not.
2. Features:
Oppositions will not be binding for Examiners;
Oppositions will not suspend the registration procedure;
Filing an opposition will not be mandatory nor will be to respond
to the opposition;
Lack of response to an opposition will not be considered as a
tacit acceptance of the arguments raised by the opponent.
3. Implications:
Before this reform, the only way to oppose the registration of pending applications in Mexico was through the filing of unofficial and unbinding writs called "observations from third parties", reason for which this option was not commonly opted by trademark owners. Now with this major reform, it is expected a more interactive environment between holders and a more important role for trademark surveillance.
Furthermore, not only will the implementation of the opposition system strive for greater interaction between applicants, opponents and examiners, but also it will increase the accuracy and legal certainty in IMPI's resolutions.
Finally, it cannot be ignored the fact that the implementation of the opposition system will affect the length of the trademark prosecution. Nonetheless, such impact is minimal considering that this will not be an independent procedure within the trademark registration prosecution nor will it suspend the registration procedure, added to the short times established for publication, opposition and response. Therefore, the trademark registration system in Mexico will continue being a swift system but much more efficient.
If you need further information, you can direct your inquiries to jmena@clarkemodet.com.mx
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.
