MEXICO. HOW THE OPPOSITION SYSTEM HAS BEEN IMPLEMENTED
The one reason that trademark oppositions are filed is to counter a potential infringement on the rights of the opposing party; of course, there are often other issues at play, such as the interest of business owners to market their products and to attract consumers to their trademarks generating loyalty therefrom. Avoid confusion of similar trademarks in the market is also a reason to file oppositions.
Under the Mexican IP Law, the registration of a mark for its use in trade, industry or services is not compulsory. Notwithstanding registration is needed for protection.
In the past, Mexico did not have a trademark opposition system and applications that were approved by the examiner, they proceeded directly into registration; in fact, trademark owners did not have the legal opportunity to oppose an application with the intention of preventing registration.
The Mexican Trademark Office, unilaterally took the decision as to whether the proposed application might conflict with prior registrations or pending applications, and if it was the case, office actions only served on the applicant, who had to answer them in a period of a two-month term with an extension of other two additional months.
Those office actions were not served to the owners of an application or registration that were considered relevant by the examiner, which constituted a disadvantage for them because they could not be pronounced against the granting of such application, as well as to let the examiner know of other relevant aspects such as the fame or notoriety of the trademarks.
When Mexico became part of the Madrid Protocol, it was deemed that the IP Mexican system needed the opposition, on April 28th 2016, and a Decree was approved amending the Law of Industrial Property to incorporate a trademark opposition system in Mexico.
Once a trademark application has been received by the Institute, the authority shall proceed, and it will carry out a formal examination of the same, as well as the documentation filed, to determine whether the requirements specified in this law and its regulations are complied.
With this opposition system, the Institute, has the faculty to determine if an application incurs in any prohibition of the applicable legislation, the opposition will not result in any suspension of the registration process, since it shall not automatically determine the outcome of the substantive examination carried out by the Mexican Industrial Property Law.
Between the main advantages of the oppositions are the faculty of examiner to know of the existence of foreign equivalents or marks that are similar in meaning but dissimilar in appearance and pronunciation that are not identified by the Mexican Database of Trademarks (MARCANET), with the phonetic search an algorithm that finds the marks in the database most similar to the mark being searched.
The main disadvantage of the Mexican opposition system is that it has no binding effects on the Institute but it will have an impact if the matter showed reach Federal Courts.
Due to the mentioned disadvantage and the growing numbered of filed oppositions in Mexico, on March 1st 2018, a proposal to amend the recently implemented opposition system was presented before the Permanent Commission of Congress, same that if approved will become into force and effect within sixty working days of its publication in the Gazette, being the most relevant aspects:
The change of the nature of the opposition in order not to be a protest against pending trademark applications but a legal procedure where evidence and final pleadings will have to be submitted, for which we can mention the following considerations .
(i)All kind of evidence would be admitted with the exception of confessional and testimonial evidence same that would have to be studied by the examiner in charge of the opposition, giving the applicant of said opposition the opportunity to make final pleadings.
In conclusion, Mexico has handled an opposition system that provides an additional defense mechanism, mainly in the benefit of trademark owners, without the authority leaving aside its protectionist function, but working together by providing elements to enforce its internal analysis, with a healthy respect for industrial property law.
Clearly Mexico continues to maintain it IP system in the fore front of developing countries.
Marisol Balandra Perez.
(i) Mexican Institute of Industrial Property. “Advantages of the Opposition System”.
Chamber of Deputies. Parliamentary Gazette. March 01, 2018. Pages 20 to 23.