‘‘The opposition system is, finally, a reality in Mexico,’’ Miguel Angel Margain, General Director of the Mexican Trademark Office (MTO) told the audience at in the Opposition System Forum on June 15.
Mexico’s adherence to the Madrid Protocol and the Trans-Pacific Partnership made this goal easier to achieve, since it was an imperative to harmonize the Industrial Property Law (IPL) with global standards and rights.
An opposition system had been a long-time demand of trademark owners and intellectual property practitioners in Mexico. The new system will likely be an improvement that will help reduce the need for expensive litigation, but questions remain as to whether there will be problems with bad faith oppositions.
In this context, on June 1 the opposition system legal provisions were published in the Federal Official Gazette. These provisions will come into force on August 30, 90 days from its publication in the gazette. The decree published by the President amends, among others, Articles 119, 120 and 125 of the IPL to establish the opposition system.
According to this modification, the trademark applica- tions shall be published by the MTO in the Industrial Property Gazette within the following 10 days of its filing. Any third party, who believes that the trademark conflicts with any of the legal impediments stated in Articles 4 and 90 of the IPL, may file a written opposition within the non-extendible one month term after such publication.
Article 4 sets prohibitions to trademark registration based on international treaties provisions, morality and public order grounds, while Article 90 states absolute and relative legal impediments such as lack of distinctiveness, prior confusingly similar registrations, reproduction of titles of works or artistic names, invasion to well-known trademarks, among others.
The opponent has to submit supporting evidence and the payment of government fees about $235.
Afterwards, within 10 days, the MTO shall publish in the Industrial Property Gazette a list containing the trademark applications that received oppositions in order for the applicant to file written counterarguments within the nonextendible one-month term after the publication.
Finally, the MTO will decide on the trademark applica- tion and notify the opponent whether the registration is granted or not. The MTO, however, will not notify the opponent as to the outcome of the opposition separate from the registration decision.
It is important to note that the opposition does not sus- pend the prosecution of the trademark application and the MTO may take into consideration or not the opposition and counterarguments in its in-depth examination.
Also, according to the amendments, filing an opposition does not make the opponent an interested party or third party in the prosecution of the trademark application.
As we can see, the implementation of the opposition system will allow any person to provide the MTO with grounds for denying trademark applications in order to avoid granting exclusive rights to marks that could invade previous rights. Consequently, it is expected that the number of nullity actions filed against trademark registrations decrease.
On the other hand, a downside of this reform is that the opponent is not considered an interested party or third interested party and, therefore, the opponent would not have legal standing to challenge the MTO’s decision on granting the registration.
Furthermore, if the MTO issues the certificate of regis- tration, it shall be understood that the opposition did not prevail. However, no formal notification of the dismissal of the opposition to the opponent will be given. According to the Mexican Constitution and international treaties, such fact could be considered contrary to human rights-related to principles of law about proper defense and hearing rights in legal proceedings.
An additional deficiency of this reform is that it does not provide any penalty for opponents who file patently inadmissible oppositions or with the clear dishonest purpose of extorting legitimate trademark owners. One reason for this is that the wording of the amendment is very broad, as it allows to any person to file oppositions.
In sum, the introduction of the opposition system in Mexico is a good step forward in the industrial property field. It gives an opportunity, pre-registration, to individuals and companies with legitimate rights to provide the MTO with grounds to deny exclusive rights over trademarks that could invade their prior rights. This will help to avoid long and expensive litigation proceedings in the form of nullity actions against improper granted registrations. Let’s see how the opposition system works and wait for the judicial binding criteria regarding its implementation.