By Patricio Gonzalez, NEREO LEGAL
The trademark opposition system in Mexico represents a significant development in the country’s intellectual property landscape. Historically, Mexico did not have an opposition procedure in place, which allowed for a streamlined, albeit somewhat vulnerable, process for trademark registration. This gap left room for potential conflicts and misuse of trademark proceedings, as interested parties had limited recourse to challenge pending applications before they were granted.
Recognizing the need for a more robust system that would align Mexico with international practices and provide greater protection for brand owners, an opposition procedure was introduced in 2016. This amendment provided the authorities with relevant information to help grant or deny a trademark application.
Contents
3. Impact of Successful Opposition on Future Actions
5. Best Practices for Trademark Opposition
1. Current Legal Framework
Further to the introduction of the opposition figure in the Mexican IP system in 2016, a new law was enacted in July 2020 (Federal Law for the Protection of Industrial Property) due to the numerous changes implemented to comply with the USMCA. Under this new legislation, the opposition proceeding was set out as follows:
All trademark applications are to be published in the electronic Industrial Property Gazette within ten business days of their filing date. The Gazette is published daily.
Any third party (opponent) considering that an application infringes its trademark or prior rights will have one month from the date of publication in the Gazette to file an opposition. Any type of evidence (except for confessional and testimonial evidence) can be filed with the opposition. The Mexican Trademark Office (MTO) can take the opponent’s prior registrations and arguments into account, but it is not obliged to do so. This means that as a result of this “light opposition” procedure, the MTO may cite the opponent’s registrations as prior marks in a regular substantive examination office action but could also grant a registration to the applicant and ignore the opposition.
After the one-month window for oppositions, the MTO will initiate its analysis of the application (formal and substantive examination). If it issues any formal requirement, or if it finds any grounds for refusal, it will communicate this to the applicant, along with any opposition filed by a third party, granting a two-month term to file any reply to requirements and opposition.
If the applicant does not comply with a formal requirement or does not produce a reply to the provisional refusal or the opposition, the application proceeding will be deemed abandoned.
Once the two-month term has passed and all the evidence has been processed, the MTO will summon the parties of the proceeding (applicant and opponent) to formulate their final pleadings, granting a five-day term for this purpose.
After this period, the MTO will proceed to issue the final resolution, informing the decision to both the applicant and the opponent.
2. Grounds for Trademark Opposition in Mexico
The current Mexican law establishes that any third party with an ‘interest’ has legal standing to file an opposition. However, this broad wording has been interpreted to mean someone having a trademark application in progress, a trademark registration that could be affected by the application, or in some cases, anyone who could be aggrieved by the granting of a generic or descriptive trademark. Also check how to file a trademark in Mexico.
Another important fact to take into account is that Mexican law does not set out, in a restrictive manner, the grounds for trademark opposition in Mexico that any interested party could elaborate. However, a further provision in the law establishes that any opponent who does not prevail in an opposition procedure cannot file a cancellation action on the same grounds argued in an opposition. This special rule turns the filing of an opposition into a very delicate, complex, and strategic matter that must be carefully assessed.
3. Impact of Successful Opposition on Future Actions
If the opposition is successful and the trademark registration is denied, the applicant will have the regular path to challenge the decision by filing a review before the IP Specialized Chamber of the Federal Administrative Court (and a judicial review proceeding after that).
Conversely, if the opposition is unfruitful and the trademark registration is granted, then the opponent will face a special situation due to the special rule mentioned beforehand. The opponent can still file a cancellation action against the trademark registration, but it cannot be grounded on the same arguments as those used in the opposition. More specifically, rather than referring to grounds of opposition, Mexican law sets out that the cancellation action cannot proceed if it contains the same arguments and evidence used in the opposition.
4. Strategic Considerations for Trademark Opposition in Mexico
In light of the above, it can be concluded that the filing of a trademark opposition in Mexico entails a very strategic and thoughtful decision that must assess not only the strength of the grounds, arguments, and evidence at hand but also include a thorough analysis of any future disputes that may arise.
Given the compact and administrative nature of the trademark proceeding, if the case is a complex one, a rights holder might be better protected by waiting for the colluding trademark to be granted and filing for a cancellation action in a formal litigation avenue (even if this first stage is also substantiated before the Mexican Trademark Office).
On the contrary, if the matter at issue is more straightforward, involving confusing similarity or even an unfair competition or bad faith filing, a rights owner should opt for filing the opposition and halt the potential granting of conflicting rights.
5. Best Practices for Trademark Opposition in Mexico
As previously stated, the filing of an opposition against the registration of a trademark should entail a complete and detailed evaluation of the rights holder’s trademarks and other related rights, such as designs or copyrights, along with a careful assessment of the applicant’s portfolio and any prior use they might have. Trademark owners should not hastily decide to oppose any given trademark applications if that might preempt the opportunity to prepare (in an extended timeframe in comparison with the one-month opposition term) and access a more robust cancellation action.
6. Conclusion
The trademark opposition system in Mexico presents both opportunities and challenges for rights holders. The strategic decision to file an opposition must be made with careful consideration of the strengths and weaknesses of the case, the potential impact on future legal actions, and the specific nuances of Mexican trademark law.
Given the procedural constraints and the potential preclusion from filing a cancellation action on the same grounds, it is crucial for trademark owners to conduct a thorough assessment before deciding to oppose an application. This includes evaluating the strength of their own rights, the likelihood of success in opposition, and the possible benefits of alternatively pursuing a cancellation action if the opposition is unsuccessful.
Ultimately, a well-informed decision-making process that considers both immediate and long-term implications will help trademark owners effectively protect their rights in the dynamic landscape of Mexican intellectual property law. By pondering strategic considerations, rights holders can navigate the opposition process with greater confidence and achieve favorable outcomes.
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