May 4, 2016
On April 28, 2016, the lower chamber of the Mexican Congress approved a long-awaited Decree, whereby some articles of the Mexican Industrial Property Law (IPL) were amended and new articles also introduced, pertaining to the implementation of a trademark opposition proceeding in Mexico (hereinafter “the Reform”).
The Reform will come into force within the next 90 calendar days after it is published in the Federal Government Gazette. The specific publication date is still unknown, since it will be necessary that the Tariff of the Mexican Institute of Industrial Property (IMPI) is also amended to include the official fees for filing of or response to an opposition.
According to the Reform, all new applications filed in Mexico will be published for opposition purposes within the next 10 working days of the filing date to allow any third party who deems that a published application falls within the absolute or relative grounds of refusal as provided in Articles 4 and 90 of the IPL to submit a brief of opposition, within a non-extendable one month term of publication of the application. The brief shall be accompanied by all documentation supporting the opposition.
Once the one month term for opposition expires, IMPI will publish within the next 10 working days all oppositions filed. Owners of opposed applications will have a one month term to raise arguments against the alleged grounds of opposition.
It is important to note that the opposition will not suspend prosecution of the applications, as IMPI will continue to conduct its official examination of trademark applications on both absolute and relative grounds in parallel to the opposition proceeding.
It will be optional for IMPI to consider the arguments submitted by the opponent in an opposition, as well as the defensive arguments raised by the applicant. Thus, if the application is refused, IMPI will serve the opponent with a writ informing of such refusal. In turn, if the application matures into registration, IMPI shall serve the opponent with a writ informing of the granted registration.
Finally, despite the outcome of an opposition proceeding, the post-registration grounds for invalidation currently established by the IPL will remain available.
Our clients will timely receive our watch notices so they can assess whether to oppose an application or respond to an opposition, depending on the case.
We will revert once publication of the Reform is published in the Federal Government Gazette.