IP Updates Mexico introduces a trademark pre-registration opposition system

On April 28, 2016, Mexican Congress approved an amendment to the Industrial Property Law to include a trademark pre-registration opposition system. In spite of such amendment has not entered into force yet, we consider that it is important that you know the main issues that will be introduced into the trademark registration procedure.

  • All trademark applications will be published within the ten days of filing date, for opposition purposes by third parties.
  • Any person may oppose to the registration of a trademark based on any prohibition under the Mexican Industrial Property Law, without having to justify owning any trademark application or registrations or have a better right over the trademark applied for.
  • The term to file an opposition will be of one month from the publication date.
  • It will be necessary to pay official fees for filing oppositions.
  • The applications receiving an opposition will be published, and applicant will have a term of one month to file arguments against the opposition.
  • The registration proceeding will not be suspended and the opposition and applicant arguments shall be taken into consideration by Mexican Trademark Office to issue a final resolution over the granting of the trademark registration but no specific resolution over the opposition procedure will be issued.
  • The granting or refusal of the registration will be notified to the opponent in order to let him know if the opposition was successful or not, so that he can take other legal actions against the authorized trademark registration, or to know if the application was refused for not complying with other legal requirements not argued by opponent in the opposition motion.

The approved amendment to the Law will be published in the Federal Official Gazette, and it will be in force after a three-month term from publication, and when that happens we will inform you. Notwithstanding the aforementioned, please let us know if you have any question about the opposition system that will be established in our country for the first time.