Advantages of an opposition procedure

July 27, 2010

BY CARMEN SADA Y GARCÍA NARANJO

There is no doubt that substantial efforts have been effected in Mexico to improve trade mark protection, such as those contained in the 2005 amendment to the Mexican Industrial Property Law, where the possibility to obtain declarations for well known and famous trade marks has been established. However, it is worth mentioning the potential advantages of establishing a trade mark opposition procedure (TOP) in Mexico, in order to provide the owners of registered trade marks with a legal action to prevent registration of new trade marks which may conflict with previous acquired rights.
While a TOP is established in most trade mark systems worldwide, it does not exist in Mexico’s Trade Mark Law so far.
The desired TOP will enable third parties to provide the Mexican Trade Mark Office with additional information or evidence that could prevent the registration of a particular trade mark and it would also complement the examination procedure, as long as certain issues that are not considered by the examiners could be brought within the opposition procedure.
Indeed, third parties would have the right to oppose the registration of a trade mark application once it has been examined and published. Of course, this procedure could delay the grant of the opposed application and the issuance of the registration cannot occur until the TOP is concluded. However, it seems that there is a great advantage in having an enforceable right after the examination and publication of a trade mark application by the Mexican Institute of Industrial Property (IMPI).

The introduction of a TOP in Mexico could constitute the most important amendments to the IP law in many years, provide trade marks owners with an enforceable right against pending applications (which does not now exist) and reduce cancellations procedures. It is expected that this practice will improve settlement prospects and lead to an earlier resolution of cases.
Mexico’s trade mark system should provide an earlier pre-registration opportunity for third parties to prevent the registration of trade marks that, if granted, may affect their business.
Source: Managing Intellectual Property Magazine, Dec/Jan 2008