Change to rule on letters of consent

February 13, 2010

BY GUILLERMO A. BALLESTEROS

MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, SEPTEMBER 2009 

Mexico is one of the few countries in the world that does not offer the possibility of opposing a trade mark application, since such proceedings are not contemplated in Mexican Industrial Property Law.
Therefore, the examination process is limited to the discretion of the examining attorney, who, after conducting the novelty examination, determines whether there is already a registered identical or similar mark applied to the same or similar goods/services as provided in article 90 section XVI of Mexican Industrial Property Law.
If the examiner finds that there is an identical or confusingly similar mark, he or she issues an official action citing as anticipation the identical or confusingly similar mark. In order to overcome this type of objection, arguments can be filed based on the following:
I.      Graphic, phonetic and ideological differences.
II.      Differences between the goods or services sought to be covered.
III.      Submitting letters of consent.
In many cases, an objection on the grounds of prior existence of a confusingly similar mark cannot be overcome and there is a need to approach the titleholder of the cited mark. In the past, the Mexican Institute of Industrial Property accepted letters of consent as a way to overcome an objection, but in recent years a new criterion has been adopted and letters of consent are no longer accepted.
Although letters of consent are still often submitted, the Mexican Trademark Office has consistently refused them and has issued official notices of denial. This has forced applicants to challenge the official notices of denial by means of a nullity action brought before the Federal Court for Taxes and Administrative Affairs, which will ultimately determine whether letters of consent should be accepted.
Colombia and Uruguay also do not accept letters of consent, and although accepted in Argentina, the country’s Trademark Office is not bound to do so.
Source: Managing Intellectual Property Magazine, Sep 2009.