On June 1, 2016, the bill implementing the opposition system in Mexico was published in the Official Gazette.
The aforementioned reform foresees that the Mexican Institute of Industrial Property shall have a 10-day term for publishing new trademark applications within the Industrial Property Gazette. Once the application is published, any person who considers that the respective trademark incurs in any of the prohibitions set forth in articles 4 and 90 of the Industrial Property Law may express an opposition to the granting of such application in a writ that may be filed along with the payment of the respective fees and supporting documentation. The Industrial Property Gazette will also publish a list of opposed applications and the applicants will have a one month term to reply to the opposition counted from such publication.
The Mexican Institute of Industrial Property will continue to perform its own trademark examination and decide if registration is granted or refused. However, it will inform the opponent if registration of the opposed application is granted or refused.
In other words, the opposition system will not substitute the trademark examination currently carried out by the Mexican Institute of Industrial Property, who will continue to grant or refuse registration in spite of an opposition or the lack of the same. Still, it will allow the opponent to provide the authority the information and arguments that may be necessary in order to detect and refuse trademarks that incur in the prohibitions for registration and, in such manner, it will hopefully reduce the number of unlawfully granted trademark registrations that are then subject to annulment actions and may help trademark owners in avoiding entering into such actions for defending their previous trademark rights.
The reform will come into force in ninety calendar days counted from June 1, 2016.
The partners and attorneys of our Intellectual Property department are at your disposal for answering any questions you may have in respect to this important reform.
|Lic. Martin Michaus
|Lic. Jose Hinojosa
|Lic. Eduardo Kleinberg
|Lic. Adolfo Athie Cervantes
|Lic. Claudio Ulloa
|Lic. Jorge Vega
|Lic. Juan Carlos Hernandez
Mexico City, June 3th 2016.