December 16, 2016
New Amendments of the Regulations of the Industrial Property Law
By: Manuel Morante
Mexico City, December 16th, 2016. Today the amendments to Regulations of the Industrial Property Law (RIPL), prepared by the Mexican Institute of Industrial Property (IMPI), were published, adopting the reform into law and published in the Official Gazette of the Federation on June 1 this year. The reform details the new opposition procedure to trademark applications. The most relevant topics in the reform are the following:
- Opposition procedure to trademark applications
- Electronic means for filing petitions and notices
- Registration of transfers and licenses
- Inclusion of nominal trademarks
1. Opposition procedure
One of the most important features of the reform is the regulation of opposition procedures to trademark registration applications. To this respect, articles 59bis, 59ter, 59quater and 59quinquies have been added to the RIPL, which stipulate the following:
a. Publication of the trademark registration application in the Industrial Property Gazette which shall contain the following information:
- Docket number
- Filing date
- Distinctive sign requested for registration
In respect to the information required for publication, it is still lacking stipulations for the name of the claimant. We consider this piece of data important for the sound implementation of an opposition procedure, as not only information as to which sign a procedure intends to contest, but also the identity of whom the claim is being filed against is likewise important. Therefore, we recommend that article 50a be redrafted.
b. The new articles also stipulate consequences for non-compliance with the provisions in the IPL and the RIPL that relate to opposition procedures, providing for the following cases:
- When opposition writs are filed after the deadline established in the IPL, such petitions shall be immediately dismissed.
- When written opposition writs or petitions related to the procedure are not in compliance with the legal requirements and regulations, they shall be required by IMPI to remedy the aforementioned omission within a deadline of 5 days. If the opponent does not respond within the established deadline and does not meet said requirements, the opposition shall be dismissed.
It is worth mentioning that the legislative draft does not stipulate that IMPI shall require the registration applicant to file any counterclaims against the opposition writ. This can be risky, since this new regulation would not provide for the opportunity to rectify possible legal or regulatory omissions that could ensue, possibly leading to a discriminatory situation.
c. The list of applications subject to an opposition procedure to be published in the Industrial Property Gazette shall contain:
- Docket number
- Folio number of the opposition writ
- Filing date of the opposition writ
- Name of the opponent
Note that said list does not include the sign subject to an opposition procedure nor the name of the claimant, information that is relevant and which should be included in said list, with the aim of achieving a transparent opposition procedure.
d. At IMPI’s request, opponents shall not be published in the aforementioned list if they do not meet said requirements.
e. When opposition writs are filed through the Deputy or Assistant Deputy’s Office of the Ministry of Economy, the deadlines shall after the next business day following the date on which the IMPI receives said writs.
In the case of filing opposition writs through the offices of the Ministry of Economy, the RIPL is insufficient in terms of how said receipt of writs is verified, a situation which may lead to legal uncertainty.
2. Electronic means of filing petitions
The new regulation stipulates the option of filing petitions and writs by electronic means. This does not imply that the fillings must be submitted electronically. The manner by which petitions are filed is outlined in the General Agreement, said document which must be issued by the General Director of IMPI. This involves a technological advance that was previously lacking in efforts to modernize the service provided by the Industrial Property System. Further, this draft is fully in accordance with the 2013-2018 Government Accessibility and Modernization Program, ushering in the concept of e-governance. It should also be noted that the option of using electronic means for serving notices should also be included whenever such means is requested. IMPI should provide all necessary technological means for serving legal notices.
3. Registration of transfers and licenses
The new regulation outlines the requirements for registering conveyances and licenses (articles 9 to 12 RIPL) in order to optimize this process.
4. Inclusion of nominal trademarks
Regarding the inclusion and composition of nominal trademarks, sets the terms governing the alphabet, whereby the “Roman alphabet” has been replaced by the “International Latin alphabet.”
These reforms and additions to the Regulations shall provide a more comprehensive legal framework, enabling IMPI to offer a more efficient service particularly in filing opposition procedures, and for other procedures as well.
If you need additional information on this topic, please do not hesitate to contact us.