System for Opposing the Registration of Trade Marks

The System of Opposition to the Registration of Trademarks, is a newly created figure, Added to the Industrial Property Law according to the publication in the Official Journal of the Federation on June 1st of two thousand sixteen and two years after the eighteenth of May of two thousand eighteen the law was reformed structuring more broadly the guidelines of this system.

The Mexican Institute of Industrial Property (IMPI) is responsible for implementing of the System of Opposition to the Registration of Trademarks, as a tool to inhibit unfair practices of illegitimate appropriation of a mark or other distinctive sign for the purpose of obtaining benefits and infringing the rights of its rightful owner.

The System of Opposition to the Registration of Marks allows any natural or legal person to intervene in the procedure of application for registration of a mark, considering that this sign is in one of the legal cases of impediment marked in the Industrial Property Law, that is to say, to cite some cases, that it is a distinctive sign;

• Contrary to public order, morality, morality or contrary to legal provisions

• Liable to deceive the public or to induce error.

• The same or similar in degree of confusion to a previously registered or pending trademark.

• Similar to or identical to a well-known or famous brand.

• Technical names or common use of the products or services that are intended to be protected with the proposed trademark.

• Three-dimensional forms of the public domain, of common use and those without distinctiveness.

• Holograms of the public domain and lacking distinctiveness.

• Descriptive markings. • Letters, digits or isolated colors.

• Geographical areas, maps, people, designations of origin, geographical indications.

• Copyright or related rights without the authorization of its owner. To cite some cases.

This small adversarial procedure carried out in parallel with the registration procedure, in addition to allowing opponents to speak out against it and to provide evidence that the registration of the intended trade mark is not granted, the System of Opposition to the Registration of Trademarks brings to the IMPI various elements in order to carry out efficiently and effectively a complete analysis on the procedure of registration of the trademark in question, of course without denying the right of the applicant for the trade mark to express what is appropriate to his right and to refute the evidence in question, providing greater legal certainty for the granting of new trademark registrations and preventing the public and consumers from being misled by illegal or confusing trademarks.

The procedure proposed for the System of Opposition to the Registration of Trademarks is efficient and agile, as shown below the stages that compose it are simple;

• STAGE ONE: Begins with the publication of the application for trademark registration in the Gazette.

• STAGE TWO: Once the application has been published, the opponent will have a one-month non-renewable deadline for filing the opposition to the registration.

• STAGE THREE: Upon submission of the opposition, if it meets the requirements, it will be published in the Gazette otherwise the corresponding.

• STAGE FOUR: After the publication of the opposition, the holder of the application will have an unalienable period of one month to present a response to the opponent’s arguments and evidence.

• STAGE FIVE: Once the IMPI has the arguments of the opponent and the holder of the application, it will carry out the examination corresponding to the proposed sign, for which it may take into consideration the demonstrations and evidence offered.

• STAGE SIX: The IMPI will grant or deny the requested registration and will communicate to the parties the resolution that the Institute has issued in the application for registration.

Finally, it should be noted that the tool that the System of Opposition to the Registration of Trademarks signifies is part of the Industrial Property figures available for the eradication of unfair competition that day after day gains more strength and whose application has been extended to other distinctive signs by avoiding lengthy and tedious litigation or quasi-litigation proceedings in defence of previously granted intellectual property rights.

In Bandala | Díaz | García we keep you updated with relevant information about the Trademark Registration Opposition System.