Given the fundamental role that distinctive signs play in the global economy today, the Mexican trademark system –in recent years- has undergone modifications and harmonized its procedures and criteria with international standards and trends in order to create a more appealing environment for foreign investment, facilitate the flow of commerce and encourage the economic development of our country.
The first major recent change in our trademark system was the implementation of the Madrid System back in 2013 with which further additional amendments were expected in our trademark registration procedure.
One of these additional amendments was, undoubtedly, a trademark opposition system to provide a higher degree of certainty to trademark owners and about which much has been speculated ever since the entry into force of the Madrid Protocol.
Finally, on December 14, 2015, the Senate unanimously approved the draft amendment to the Industrial Property Law (IPL) within which the long-awaited opposition system has been included and whose implementation is anticipated within the first half of 2016.
According to the draft, the senate proposed an opposition system that has a minor impact on the procedure length and which, in general terms, is the following:
- Trademark applications shall be published in the Industrial Property Gazette within a term of ten business days as of the application filing date. Following the publication, any third party who might deem the application to violate certain provisions of the IPL will be allowed a non-extendable one month term to oppose its registration. After said term has passed, IMPI shall publish, within the following ten business days, a list of applications that received an opposition allowing a non-extendable term of one month (as of the date on which the publication becomes effective) in order to enable the applicant to contest the arguments, impediments and anticipations mentioned within the opposition brief.
- Oppositions and, where appropriate, applicants’ defenses will reach the hand of examiners before proceeding to the substantive examination. Nonetheless, the opposition system will not be binding for examiners nor will it be deemed as a procedure within the trademark registration prosecution, therefore, oppositions shall not suspend the registration procedure and applicants shall not be obliged to respond to the opposition; in other words, failing to submit arguments against the opposition, shall not be considered as a tacit acceptance of the arguments raised by the opponent.
We consider that the opposition system will definitely allow examiners to obtain information that might result very useful during the corresponding examination and, therefore, achieve more informed and accurate decisions and decrease the number of cancellation actions based on registrations mistakenly or inadvertently granted by the Institute.
Furthermore, in our view, the proposed system will undoubtedly improve competitiveness, as well as dynamism and culture of IP rights protection in our country without greatly affecting the length of the prosecution provided for by our effective trademark registration system.