April 19, 2016
New Opposition System in Mexico
By: María Teresa Eljure
On April 28, 2016 the Chamber of Deputies passed an amendment Decree to reform various statutes in the Industrial Property Law. Although it has not yet been published in the Official Gazette of the Federation, the most relevant are the provisions outlining opposition procedures in pending trademark applications.
The reform establishes the publication in the Industrial Property Gazette of pending trademark applications without an issued official notice related to the procedural examination of said applications. This publication enables third parties to be informed of the existence of said applications in order to give said third parties the opportunity to decide whether to oppose the granting of their registration within the set deadlines for doing so, whereby they may file supporting documents of said opposition, which should be done in writing.
In turn, the trademark applicant can protest said opposition, even though the trademark authority is not obligated to take either of the two official notices into consideration. Consequently, it is up to the discretion of said authority to grant the respective trademark registration title or, if applicable, a letter stating its objections which must be answered by the applicant. If the trademark is denied, the opposing party should be notified of said decision. The same procedure also applies in cases when the corresponding registration is granted.
Let us assume that even though the examiner of a trademark application continues to have the authority to decide whether or not to grant a trademark registration, giving third parties other than the applicant the opportunity to present their arguments can be a good way for the trademark authority to reduce the margin of error in performing its procedural acts.
It is worth noting that since oppositions do not constitute proceedings between opposing parties, nullity actions provided in the Industrial Property Law continue to exist; therefore, those who are impacted by the granting of a trademark registration despite having contested same have the option of litigation to reverse said trademark concession.
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