What has changed in the opposition system in Mexico?
J. Rafael Amador Espinosa
The Federal Law for the Protection of Industrial Property (“LFPPI”), in force since November 5, 2020, and which abrogated the Industrial Property Law (“LPI”), has incorporated some transcendental changes to the opposition system in Mexico.
Ten days after the Mexican Industrial Property Office (“IMPI”) receives an application for registration of a distinctive sign, either in a traditional way on paper or through the electronic system, such is published in the Industrial Property Gazette (“Gazette”) in order for any third party, with sufficient interest, to file a written opposition to the registration of the distinctive sign.
The arguments of the opposition must be based on one of the cases of refusal of the trademark’s registration (articles 12 and 173 of the LFPPI) and must be filled with relevant evidence to prove the claim. The non-extendable term to file the opposition is one month after the publication in the Gazette.
Since the amendments to the LPI in 2018, the opposition procedure is binding for the applicant and allows the parties to submit evidence and arguments, and this is maintained in the LFPPI.
In our opinion, the most important changes incorporated to the opposition system in the LFPPI are two. First, since the notification of the opposition, which will be issued in a single notice (in such case, along with the impediments or requirements issued by the IMPI), must be answered within two months from its notification, the applicant will have two additional months for its attention, prior payment of official fees.
Second is that the IMPI will not admit an application for administrative declaration of invalidity if the opposition has been filed in the process of distinctive sign registry, provided that the arguments and evidence are the same and the IMPI has already ruled on the matter.
In this regard, in our opinion this provision should be applied restrictively, otherwise it would be limiting the rights of trademark owners who consider their exclusive rights are being breached.
For further information, please contact some of our specialists in Intellectual Property.
