The Mexican Institute of Industrial Property (IMPI) made headlines earlier this year when it amended the Mexican Industrial Property Law (IPL), setting up a trade mark opposition process in Mexico. We discuss how this came to be, and what it means for you and your organisation.
Mexican Trade mark opposition in Mexico: Why now?
In a time of economic difficulties, the Mexican economy has been slowly and steadily strengthening. According to Mexico’s Secretary of Economy, Bruno Ferrari, in 2012 Mexico was the 11th largest world exporter and had the highest value of exports in Latin America…80% of which were manufactured goods. Growth of trade mark protection is important to Mexico where the IMPI is among the top fifteen IP offices, receiving the highest number of trade mark applications worldwide (see article). Securing rights, and easy processing of rights, were – and remain – vital.
Historically, Mexico has been one of the few large economy countries without a trade mark opposition system. Though its Industrial Property Law provided for a procedure to request cancellation of registrations, these were costly and time consuming and often handled by judges with little trade mark background.
So in 2013 when the IMPI became part of the Madrid Protocol, it began work towards establishing a proper trade mark opposition system. Though not a requirement, a clear opposition proceeding system is recommended as part of participation in the Madrid system. With assistance from organizations such as the International Trademark Association (INTA), the IMPI drafted then passed Articles 119 and 120 of the IPL, which provide for this.
In April 2016, the Mexican Chamber of Deputies issued a Decree approving the Articles set forth to implement a trade mark opposition system in Mexico. The Decree was approved by President Enrique Peña Nieto, and was made effective 30 August. This new opposition system is not perfect, but is a step towards a more globally cohesive trade mark protection in Mexico.
The new protocol
Article 119: Application goes to the Institute, which will be published within 10 business days in the Official Gazette of the Federation (Diario Oficial de la Federación). A formal examination of the application and any supporting information will follow to determine if the applicable laws and regulations have been complied.
Article 120: A third party has 30 days (extensions are not allowed) from the date of Gazette publication to file an opposition. Upon expiration of the 30-day opposition period, the list of opponents is gathered and published in the Gazette within 10 business days.
What it all means for Mexican IP
As a result of these amendments to Mexican IPL, there are some major improvements for Mexican IP which we expect to see:
- It will provide an opportunity for third parties to file information, evidence and documentation regarding their own trade marks that will enable Examiners to issue more-informed and more accurate decisions on the registrability of trade marks.
- The opposition proceeding will enable the Registry to have more information to determine the granting of registrations and will in turn reduce errors, which are usually subject of cancellation actions.
- The opposition procedure will not be treated as part of the registration process so will not lead to delays in the final resolution.
It is important to note that the opposition system has no binding effect on the registration process, nor in general the registrability of trade marks in Mexico. Therefore, it is not compulsory for an application to respond to an opposition notice.
Application for global IP organisations
The critical change here is that the new opposition process enables Mexican trade mark owners to file an opposition, which necessitates a new step in brand management: a trade mark watch. And with the opposition period being only 30 days, the watch process must be fast and effective. Setting up a daily “search” of the Mexican database or daily watch on the publication to look for similar and identical matches would be an ideal start for parties to monitor published trade marks.
For businesses in Mexico, there are multiple implications brewing for their decision-making processes and procedures. As Ana Vargas Ramirez, Partner & Litigation and Foreign Department Director at Iberbrand explains, “businesses will need help understanding the changes and how they affect their business. Our firm is prepared to help clients navigate the changes and stay abreast of the details within the law to provide clients with a solid process to monitor trade marks.”
“Like any change, it will take time for the market to respond to new regulation and could very well turn into a differentiator as early adopters build strong processes and procedures around it. Those companies and firms that don’t start taking steps to incorporate trade mark watching as daily practice may find themselves falling behind competitors as more time passes. This adoption will be much easier for large business, but it’s something important for small and medium businesses to figure out how to do on their end, even if it’s a more difficult solution for them.”
Trade mark watch: The CPA Global difference
Brand owners and trade mark practitioners have trusted CPA Global now for more than 70 years with trade mark watching, part of our TMDS (Trade Mark Directory Service) service offering.
For companies that want to benefit from the new trade mark opposition system in Mexico, we can set up both a daily “search” of the Mexican database or daily watch on the publication, enhancing the information with translation and advice on if there was an error with the publication. We also provide reports to our customers within 2 days of a trade mark being published, providing the maximum amount of time within the 30-day opposition period to file your infringement claim.
Great trade mark watch service when time is of the essence to protect your IP. Visit our Trade Mark Watching Services page to learn how we help you protect your brand.