November 6, 2015
The Mexican Senate is to discuss a draft of amendments for introducing trademark opposition proceedings in the Mexican Industrial Property Law (MIPL).
As you may know different to most of countries Mexico has no opposition proceedings during trademark applications prosecution.
The main points of the draft are the following:
1. Pre-registration system (First Publication): Accordingly all trademark applications shall be published in the Industrial Property Gazette no later than ten working days as from the filing date.
2. Standing for opposition. Within a non-extendable term of one month as from the date of the publication becomes effective anybody who deems that a published application falls within the absolute or relative grounds of refusal as provided in Articles 4 and 90 of the MIPL will be entitled to submit a brief of opposition.
The brief shall be accompanied with all documentation supporting the opposition as the opponent deems pertinent, together with the proof of payment of the official fees which shall be established in the tariff of the Mexican Institute of Industrial Property (IMPI).
3. Contradictorily to the above point three rules are established for the opposition process as follows:
a. Opponent will not be recognized as a party in the opposition proceedings.
b. Prosecution of the application will not be suspended.
c. The filing of an opposition will not influence IMPI over the registrability examination of the application.
4. Service to Applicant. (Second Publication) All oppositions will be published in the Industrial Property Gazette so that affected applicants become legally served. This publication will be effected within the ten working days following the expiration of the one month term of the first publication.
5. The applicant will be entitled to contest the opposition by filing a brief submitting all legal arguments as deemed pertinent. The non-extendable term for applicant to file this brief will be one month as from the date the second publication becomes effective.
6. It will be optional for IMPI to consider the arguments submitted by the opponent as well as the defensive arguments by the applicant, when IMPI conducts the registrability examination of the application.
7. If the application is refused IMPI shall serve opponent with a writ informing on the data of such refusal decision. In turn if the application was issued into registration IMPI shall serve the opponent with a writ informing on the data of the granted registration.
Fortunately enough this draft is yet to be discussed in the Mexican Senate since you may share our opinion that many changes need to be introduced to improve the draft. Ideally speaking such changes should include making the opposition a binding proceeding for IMPI and not a mere third party observation action which might result innocuous.
We will closely follow the discussions of the draft and will keep you advised of relevant developments.