As we reported in our earlier post, a significant amendment to
the Mexican Industrial Property Law (IPL) was
proposed. The amendment concerned the implementation of an opposition
system in Mexico to streamline the registration process for trademarks and
slogans and the publication process for trade names, thus, harmonizing the
industrial property system in Mexico with global trends and benefiting its
users.
On April 28th, 2016, the Chamber of Deputies approved a Decree
amending the IPL to implement a trademark opposition system in Mexico and, on 1 June 2016, the amendment Decree was published in the Official
Gazette of the Federation (Diario Oficial de la Federación). It will
become effective on August 30, 2016 (90 calendar days after its publication).
To recap, as a consequence of
such amendment, new provisions were added to the IPL, including:
Article 119. Once the application has
been received, the Institute shall proceed, within 10
business days, with its publication in the Gazette and 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 obeyed. (emphasis added)
In addition, Article 120 was
amended in order to grant the opportunity to anyone who considers that an
application violates the IPL´s provisions, to file an opposition within one
month of the date of its publication in the Gazette. No extension of the
one month opposition period is allowed. After that one month opposition period
expires, a list of those applications that were opposed will be published in
the Gazette within the following 10 business days.
It is important to mention
that the opposition system has no binding effect on the Mexican Trademark
Office’s (MTO) conduct of the registration process and, in particular:
·
The opposition will not result in any suspension of
the registration process;
·
Opposing an application does not grant the opposing
party any status as an interested third party;
·
The opposition shall not automatically determine the
outcome of the in-depth examination carried out by the MTO; and
·
The MTO may consider, in its analysis, the opposition
and statements made in response by the applicant.
Considering that the new
opposition system will not be treated as a procedure within the registration
process, an applicant could decide not to respond to an opposition. Failing to
respond would not be deemed a tacit acceptance of the opposition.
Considerations
Under the prior system in
Mexico, an in-depth examination of an application was carried out by the MTO
based on the information or documentation at hand, which may or not be
complete. The MTO unilaterally decided whether the proposed application
might conflict with prior registrations or pending applications and, if so,
issued office actions which were only served on the applicant. Such office
actions were not served on the owner of any application or registration that
had been considered relevant by the MTO. Hence, registrations sometimes were
granted without the MTO being fully informed regarding third parties’ rights
that might be infringed or affected.
For such reason, this
amendment to the IPL is a great opportunity for third parties to file information,
evidence, and documentation regarding their respective marks that will allow
the MTO to better assess the registrability of a distinctive element in a new
application, and lessen the possibility of the MTO granting a new registration
that could infringe or jeopardize previously granted rights.
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