On June 1st, 2016, the Diario Oficial de la Federación DOF in Mexico, published a decree that modifies and feautures additions to the Mexican Industrial Property Law. One of these additions refers to the new “Trademark Opposition Process”.
Once filed at the Instituto Mexicano de la Propiedad Industrial (IMPI) the trademark will be processed to check if it can be registered; if no objection is raised, during the next 10 days after the filing date, the trademark is published.
The decree states that, anyone who believes that the trademark should not be registered, may oppose the trademark application by submitting all the evidence and arguments that are deemed to be relevant, along with the payment of an opposition fee.
A duly signed PoA is required to act on behalf of foreign opponents.
The opposition can be filed within one month after the trademark has been published in the Gazette.
Once the opposition is filed, there is no further comunication with the trademark office (IMPI), that means the person or corporation that filed the opposition will not be informed about the outcome of the trademark application.
Keep in mind that, the opposition does not stop the trademark registration process.
After the first publication in the Gazette, a second publication takes place, one month after the first, with a list of trademark applications that have been opposed..If the applicants wish to be informed of the further fate of the trademark application, they will be able to access the relevant information on Marcanet www.impi.gob.mx
The opposition process will take place since September 1st. 2016. In our opinion, the amount of oppositions is going to be huge and we are looking forward to see how this procedure develops in time. So far, there is no established fee yet, but the trademark office expects to have it established on July 2016.
It is very important to note that you can minimise the risk of opposition by performing a trademark availability search for potential identical or similar trademarks before you apply for a trademark.
For those who already own one or several trademarks, we strongly recommend to make regular searches for mexican trademark applications and look on the internet for information from the marketplace. Trademark attorneys usually offer monitoring services by conducting searches and providing advice.
For more info on this topic, feel free to contact us
Author: Rocío Robles Ruiz