Trademarks: New Opposition Procedure

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By Jorge F. Millan

Texas Border Business

As of June 1, of this year, there was not an actual Opposition Procedure to follow during the process of registration of an application for a trademark in Mexico. This procedure became effective in August 30, 2017.

This Opposition Procedure did not exist as such but it was implied if a generous interpretation of the Industrial Property (IP) Law was made. But there was no provision for its implementation nor a specific procedure. Additionally, there was a list of proceedings followed by the Instituto Mexicano de la Propiedad Industrial (Mexican Institute of Industrial Property) (IMPI), that could also be interpreted as an opposition against a registration application.

In fact, I used that loophole in the law to oppose applications for registration of similar trademarks that my clients had successfully registered. The effect caused by my action was to stop the opposed application from continuing its registration course. The IMPI never objected to the opposition action but I was successful in putting it in a freeze so it did not move ahead like other applications do. When I started using my freeze method, I was fully aware that I did not have the full legal support to the claim I was making but I used it effectively for years.

In the U.S., there has always been an Opposition Procedure in their Trademark Law. It lasts thirty days, during which the owner(s) of a registered trademark can oppose the registration of a trademark they consider may infringe the exclusive rights granted to their own registrations.

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During my practice, I have used a very knowledgeable, trademark and patent U.S. lawyer who has been helping me over the years with my Mexican clients in obtaining their trademark registrations in the U.S. Although the process of obtaining a final registration with the U.S. Patent and Trademark Office (USPTO) takes longer than in Mexico, it is necessary for any company or business that wants to be successful in registering their mark and/or their logo with the USPTO.

Finally, Mexico has awakened to the real world and provided lawyers with an Opposition Procedure. The modification to the IP law calls for the publication of a list of applications for registration no later than ten working days after being received. Afterwards, the IMPI will proceed to verify if the basic requirements are correct and will publish the list in the IP Official Gazette. Any person or entity will have the right to file the Opposition Procedure against the registration of a trademark that it considers, if registered, would be in violation of their exclusive rights.

It is interesting to note that filing an opposition procedure will not suspend the registration procedures (like in the U.S.) and will not consider the merits of the opposed trademark to finalize its registration procedure. The opposing party will file the legal arguments and evidence as to why such trademark cannot be registered. The legal arguments and evidence filed by the objecting party may be taken into account in the final decision taken by the IMPI as to whether or not to grant the registration of the opposed trademark. The final decision by the IMPI to grant or not the registration can be challenged through a revision recourse filed before said IP authority.

Jorge F. Millan, a fully bilingual (Spanish English / English Spanish) and bicultural attorney at law, is licensed to practice in México, with vast domestic and international experience as in-house and outside counsel for various corporations and individuals; he can be contacted: [email protected].