Mexico: trademark opposition system comes into force

Past August 30, 2016, a trademark opposition system has come into effect in Mexico. The amendment to the Mexican IP Law was published in the Official Gazette June 1, 2016 and a new opposition has come alive, where before there was none. While the opposition system is most certainly welcome, taking into account that it will make it easier – and cheaper – for opponents to oppose published trademarks that might be deemed too similar to their previous trademarks, the new opposition system has some local peculiarities that might make it a strange beast for most foreign applicants. Indeed, Mexico was one of the new countries that didn’t support an opposition system.

The key provisions of the new opposition system provide that trademark applications shall be published no later than 10 days after filing, that oppositions have a 30-day deadline after publication (no extension is available), that opposition might be based on absolute or relative grounds, that no additional comments are able to be brought to the case after the opposition is filed, that the examination will continue alongside the opposition procedure and that the examiner “may take [the opposition] into consideration” but is not obliged (“should”) to do so.

This approach to the amendment was meant to keep examination proceedings under a tight schedule (rapid publication and short deadline) but has done some in a way that prevents a more robust opposition proceeding from taking place, but that at the same time helps IP owners to better secure their rights and helps the Mexican IP Institute to overlook errors.

Some points regarding the system remain unclear, most importantly, that the new amendment does not appear to provide an appeal and that the opposing party shall not be deemed as an interested third party.

All-in-all the new opposition system is a good step forward in modernizing Mexico’s IP Law but that might require a mid-term revision to make it more robust.

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